By Kevin E. Noonan --
Review of the new "examination support document" rule promulgated in 37 C.F.R. § 1.265 on August 21, 2007 strongly suggested that the purpose of the rule was not to facilitate submission of relevant prior art as an improvement over current Information Disclosure Statement provisions, but rather to provide strong encouragement (coming close to coercion) for applicants to file no more than 5 independent and 25 total claims (see previous post on Rule 265). The bases for this were the stringent requirements not only for information but for applicants to characterize the information with regard to patentability, coupled with a complete lack of any effort by the Patent Office to modify the duty of disclosure to permit an applicant or counsel to submit an ESD without the certainty of being accused of inequitable conduct. This impression was reinforced by the guidelines issued from the Patent and Trademark Office on September 6, 2007.
The guidelines are directed to the requirements of the rule and explicate (generally) what will (and what will not) satisfy the rule. Some highlights:
1. The Office suggests that the preexamination search be performed giving the limitations in each of the independent and dependent claims their "broadest reasonable interpretation." Moreover, the limitations in dependent claims should be searched independently of their combination with the limitations or elements of the independent claims. For means-(or step-)plus-function claims, the search must encompass the embodiments explicitly-disclosed in the specification and, of course, "equivalents thereof"; it can be contemplated that any such search will be available during litigation to assert an estoppel of the embodiments satisfying the means-plus-function claim.
2. The Office also suggests that applicants (and their representatives) include "disclosed but unclaimed features" that the applicant may wish to incorporate in their claims, in order to avoid the need to perform a supplemental search. Thus, the extent of this search effectively extends past the scope of the claims to encompass whatever is disclosed in the specification. Unmentioned is whether the search must also encompass all that is know to one of ordinary skill in the art (also unmentioned is the crystal-ball, tea-leaf-reading character of this requirement).
3. Foreign patent office searches "may" not "automatically" satisfy the requirement, but it is clear from what is required for such a search to affirmatively satisfy the requirement that such a search will never suffice. Of course, the rule does not abrogate an applicant's duty of candor in disclosing whatever a foreign patent office issues in a search report. And an earlier search on a non-provisional application will not necessarily suffice, either; the guidelines do not state whether Examiner-conducted searches in earlier-filed applications are deemed to be insufficient by this rule.
4. The rule requires a large amount of detail with respect to identifying the field of search and the search terms used; reliance on the M.P.E.P. standards may be (but are not necessarily) sufficient. The guidelines refer applicants to M.P.E.P. §§ 904-904.03, and to a web-based search template (which can be found here).
5. The Office can also deem a search insufficient if it determines that there is closer prior art than what was provided by the applicant. It is unclear from the guidelines how an applicant could cure the deficiency, other than performing the patentability analysis using this newly-cited art, but it certainly increases the inequitable conduct exposure. This is particularly true if the art is applicant's own art; the existence of a genuine dispute between the applicant and the office over the scope of any said art will disappear during a post-hoc inequitable conduct accusation.
6. While providing a number of web-based resources for applicants trying to comply with the search rules (for example, the Manual of Classification, the guidance provided for ESD's with regard to accelerated examination, and a more extensive review of the classification system), the guidelines also suggest that the search be extended to "all probable classes and subclasses relevant to the subject matter of each claim," with no guidance on determining the metes and bounds of what is "probable."
7. Classification and text searches are recommended, however, classification searches cannot be limited by any text query. This requirement appears to require an entire class and subclass be reviewed and references eliminated one by one from the search after review. Text searches for PCT documents should encompass the standards set forth here.
8. "Other sources" of art outside the scope of the searches set forth in the guidelines include:
- Applicant's own work including references by at least one of the inventors.
- References cited in any prior-filed application in which a benefit or priority is claimed.
- References cited in an international search report of a national stage application.
9. Turning to the requirement that the ESD identify references "most closely related" to the claims, the Office asserts that these references will be those that disclose the most number of limitations in an independent claim; or a limitation in an independent claim not found in any other reference; or a limitation in a dependent claim not shown in any other reference. However, if such a reference has a priority or publication date less than one year before the applicant's filing or priority date, additional references should be identified that have a publication or priority date more than one year before the applicant's filing or priority date, even if that disclosure is "less closely related" to the claims. However, the duty of disclosure requires that other art, "less closely related" to the claims, be submitted in an IDS, including inter alia art cited in foreign or International search reports.
10. The Office suggests the applicant "map" (presumably using a claim chart) the portions of any reference cited in an ESD that discloses any limitation in an independent or dependent claim. Only one portion of a reference need be recited, unless any second or other reference would not be "apparent" to the Examiner. A requirement that the Examiner read the reference is not contained in the guidelines.
11. With regard to the detailed explanation of patentability, the guidelines suggest that:
The ESD must set out with particularity, by reference to one or more specific claim limitations, why the claimed subject matter is not described in the references, taken as a whole. The applicant must explain why a person of ordinary skill in the art would not have combined the features disclosed in one reference with the features disclosed in another reference to arrive at the claimed subject matter. The applicant must also explain why the claim limitations of the independent claims render the claimed subject matter novel and non-obvious over the cited prior art.
It is unclear what evidence is required to establish what one of ordinary skill in the art would not have considered in the motivation to combine vel non, or what would be considered novel or non-obvious.
12. The guidelines also make plain that, where an application claims priority to an earlier application, the requirement for showing explicit support for limitations in all independent and dependent claims extends to all such priority applications.
13. The duty to file an ESD, and all its requirements, is ongoing and arises when new art is uncovered and when amendments are made to the claims. A supplemental ESD can be required under these circumstances.
These guidelines are clearly intended to more fully explain how an applicant can comply with the ESD rules. Whether intentional or not, what they most clearly explain is that an applicant should avoid filing an ESD under any circumstances. This may be the intended consequence after all.
For additional articles in this series, please see:
- "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
- "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
- "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
- "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
- "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
- "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
- "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
- "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
- "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007
For additional information on this and other related topics, please see:
- "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 207
- "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
- "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
- "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
- "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
- "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
- "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
- "New Continuation and Claims Rules Published," August 22, 2007
- "More on M.P.E.P. § 710.06," August 20, 2007
- "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
- "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
- "Procuring Patent Protection from the Present USPTO," August 15, 2007
- "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
- "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
- "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006