USPTO Releases Guidelines on Examination Support Docs (ESDs)

Under the revised continuation rules, applicants may submit more than five independent claims or more than twenty-five total claims in an application, only if the applicant files an examination support document (ESD).

The USPTO has published additional guidelines on what is expected from an ESD. The major points include:

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.

NOTES:

• The guidelines "strongly recommend" that applicants include disclosed but unclaimed features that applicant may later claim in the initial preexamination search to avoid the need to update the preexamination search.

• The PTO likes search templates - according to the guidelines, the templates "should be considered when performing a search" (to see the search templates, click here)

• "The Office may consider a preexamination search insufficient if the Office determines that a number of references found in the areas where applicant has searched are more closely related to the subject matter of the claims than those references cited by the applicant."

• Mere text searches aren't enough - "Applicant should note that merely providing a list of the terms used in the text search will not be sufficient."

Download the ESD Guidelines here (link)