Prosecution Strategies…how to respond to the new continuation/claims rule changes

September 5, 2007 on 3:39 pm | In Legislation/Regulation, The-Practice-of-Law, USPTO |

Two new “prosecution strategies” posts:

Both are worth reading.

Russ notes that:

As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.

I was one of the patent attorneys who chatted with him about it. Of course, my skepticism regarding Accelerated Examination (AE) and the “Accelerated Examination Support Document” can be found linked to here: http://inventblog.com/2007/03/first-accelerated-examination-allowance.html

One link of note therein: First Round of Accelerated Examination Applications…100% denied? That post mentioning an unnamed source had found that a faulty pre-examination search (in the AESD) was an automatic trigger to denial of an AE request. “Faulty” meaning “Applicant’s search didn’t cover all the right classes.” Read the post for the full story. [update: as of April 10, 2007, 85% of all AESD's were either dismissed or denied]

Now apply that “faulty search” thought to the new rules’ Examination Support Document. Question: If you file an ESD, along with all of the requirements, disclosures and statements (some of which may come back to bite you in litigation), but your search missed a class (or subclass) the USPTO felt contains relevant prior art…does that mean that your ESD is rejected and you’re forced to pick 5/25 (even though you now have the exposure of filing the ESD)? Will you be provided an opportunity to redo your search?

I’m not sure that I’ve seen the answer to those questions anywhere. Perhaps they are in the “Examination Support Document Guidelines” that are coming in “October 2007.” If I missed the answer somewhere, please let me know and I’ll update this post.

UPDATE: A commentor (below) raises some additional issues (worth reading) and points out that the answer to my question actually is in the rules (I just missed it), namely Rule 1.265(e) that says:

(e) If an examination support document is required, but the examination support document or preexamination search is deemed to be insufficient, or the claims have been amended such that the examination support document no longer covers each of the claims, applicant will be notified and given a two-month time period that is not extendable under § 1.136(a) within which, to avoid abandonment of the application, the applicant must:
(1) File a corrected or supplemental examination support document in compliance with this section that covers each of the claims (whether in independent or dependent form); or
(2) Amend the application such that it contains no more than five independent claims and no more than twenty-five total claims.

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2 Comments

  1. You missed it. Check out 1.265(e) copied below for the answer regarding an “insufficient” ESD.

    Please note that this leaves a lot of questions unanswered like when the sufficiency of the ESD is measured. Is it measured upon filing? or upon examination?

    Furthermore, I think there are bigger issues for deeming the preexamination search insufficient than if you forget a class the USPTO thinks you should have searched. In particular, how do you determine what the Examiner will believe is the broadest reasonable interpretation of the claim to properly search it? All too often this is the source of disagreement during examination on the merits; now, it appears you may not make it there on claims in excess of 5/25.

    (e) If an examination support
    document is required, but the
    examination support document or
    preexamination search is deemed to be
    insufficient, or the claims have been
    amended such that the examination
    support document no longer covers each
    of the claims, applicant will be notified
    and given a two-month time period that
    is not extendable under § 1.136(a)
    within which, to avoid abandonment of
    the application, the applicant must:
    (1) File a corrected or supplemental
    examination support document in
    compliance with this section that covers
    each of the claims (whether in
    independent or dependent form); or
    (2) Amend the application such that
    it contains no more than five
    independent claims and no more than
    twenty-five total claims.

    Comment by Larry Kasoff — September 6, 2007 #

  2. I am sure that the insurers would not approve of practitioners writing ESDs either.

    And speaking of inequitable conduct, the so-called Patent Reform Bill has a provision that essentially requires the PTO to pull your reg number if you as a drafter are found to have engaged in “inequitable conduct” during prosecution. Yet another reason that no one will ever file an ESD. I guess this provision is good news for the remainder of attorneys that will be left after a number of our compatriots get stripped of their means for making a living.

    Comment by Brian — September 11, 2007 #

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