USPTO posts Examination Support Document GuidelinesSeptember 13, 2007

The USPTO has posted guidelines for Examination Support Documents on its website devoted to the new claim and continuation limit rules. Examination Support Documents (ESDs) will be required for all patent applications exceeding the 5/25 claim limit that have not yet received a first office action on the merits as of November 1.

The guidelines are 16 pages long, and confirm the onerous nature of ESDs. Perhaps the most amusing statement is:

A search from a prior-filed U.S. nonprovisional application will also not automatically satisfy the requirement for a preexamination search, unless it includes the information required by 37 CFR 1.265.

In other words, we expect the patent applicant to do a better search than at least some patent examiners do. In order to allegedly "help applicants out," the guidelines point to the USPTO's database of search templates. As noted on the Patent Prospector:

ESD represents unto itself a very thorough examination, far more formally rigorous than any analysis any examiner has ever done. As one wag quipped, "Not sure why we would need examiners anymore. Perhaps that's the idea."

Click here for previous discussion of the new rules, including more detail regarding when ESDs are required and what is required in an ESD.

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