Anticipate This!™ | Patent and Trademark Law Blog

Examination Support Document (ESD) Guidelines Published.

Posted in Practice Commentary by Jake Ward on September 13, 2007

Under the new claims and continuations rules, the USPTO is now requiring an Examination Support Document (ESD) by any Applicant who wishes to present more than five independent claims or more than twenty-five total claims in an application.  Guidelines for an ESD have now been published by the USPTO, and may be found here.

A USPTO summary of the ESD guidelines is as follows:

1. Preexamination Search Statement: a statement that a preexamination search in compliance with 37 CFR 1.265(b) was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;

2. Listing of References Deemed Most Closely Related: a listing of the reference or references deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form) in compliance with 37 CFR 1.265(c);

3. Identification of Claim Limitations Disclosed by References: for each reference cited, an identification of all the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference;

4. Detailed Explanation of Patentability: a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and

5. Showing of Support under 35 U.S.C. 112, ¶1: a showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such priority or benefit application in which such support exists.

One Response

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  1. jason said, on September 15, 2007 at 1:46 pm

    As a new patent attorney, (I have been an agent for a few years) I have a few questions about the new rules that I would like comments on from the patent bar. If you would like, pleae post these for responses.

    1. In a family with multiple after final cases, would it be desirable to file RCE’s prior to Nov. 1?

    2a. Can you withdraw a traversal?
    2b.Is a withdrawal of traversal of a restriction requirement, where election has previously been made, effective to make restriction final, such that under the new rules multiple divisionals are then permitted in cases without a first office action on the merits yet?


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