New Rule 256 (37 CFR 1.256) allows patent applicants to submit more than five independent claims or twenty-five total claims in an application if supported by a proper examination support document (ESD) prior to the first Office Action. The USPTO has released a set of guidelines for ESD content. [LINK]
An ESD has five substantive sections:
- Preexam search statement;
- Listing of closest references;
- Identification of claim limitations found in references;
- Detailed explanation of patentability; and
- Showing where each limitation of each claim is supported in the specification.
The preexamination search statement must include searches directed to each limitation of each claim. Additionally, if the claims are amended to include further limitations, the search statement must then be updated. It is advisable to hire a professional searcher to conduct the search. (Before hiring ensure they understand that the search must be fully documented.)
The office only wants a listing of the most closely related references. The best closest reference is the one that discloses the most claimed limitations. Other closest references will disclose a claimed limitation not shown in any other listed reference. References that do not meet this criteria may not be cited i the ESD, but rather must be submitted in an IDS. If the applicant later discovers an even better reference, the ESD must be updated.
Small entities will not be required to file the identification of claim limitations.