PTO proposed Examination Support Document: an effective ten claim limit for initial examination

On January 3rd, the PTO proposed two rules that, independently and certainly together, would dramatically alter the patent prosecution process in the United States. In Changes to Practice for the Examination of Claims in Patent Applications (Fed. Reg. 71: 61-69 (January 3, 2006)), the Office proposes to limit its initial examination of claims in a patent application to those claims deemed as “representative” by the applicant. An applicant can submit an “Examination Support Document” if an initial examination of more than ten (10) claims is desired, but the requirements for this applicant-supplied document are so onerous - and indeed dangerous - that the proposed rule effectively creates a ten claim limit for all initial examinations.

Under the proposed rule, an applicant would be required to identify those claims in the application that it deems as “representative” of the invention. The “representative” claims will be all of the independent claims and only the dependent claims that are expressly designated by the Applicant for initial examination. An applicant is free to designate as many claims as he/she wants as “representative,” but if more than ten claims are designated as such, “…the Office will require the applicant to share the burden of examining the application by submitting an examination support document covering all of the representative claims.”

As proposed, the Examination Support Document is an onerous and dangerous document to prepare. Requirements include:

- a statement that a preexamination search of US patent documents, foreign patent documents, and non-patent literature was conducted by the applicant
- an Information Disclosure Statement;
- an identification of all the limitations of the independent claims and designated dependent claims that are disclosed by the references cited;
- a detailed explanation of how each of the independent claims and designated dependent claims are patentable over the references cited;
- a concise statement of the utility of the invention as defined in each of the independent claims;
- a showing of where each limitation of the independent claims and the designated dependent claims finds support in the specification, including a showing of such support in each priority application in which support exists.

These requirements include several clear dangers. The effect of some are relatively easy to identify (or at least wonder about with a level of certainty) - prior art admissions on a claim limitation level, the statement of patentability vis-a-vis the prior art, and the requirement for a showing of priority support (or lack thereof) certainly stand out. Perhaps most troubling, though, is an uncertain danger — is there any lasting legal effect of designating (or not designating) a claim as representative? Do non-designated claims somehow become second-class in patent litigation? The answer would not be clear, of course, until the issue is thoroughly tested in the courts.

Considering the burden of preparing the Examination Support Document and the dangers involved with doing so, it’s likely that appliants would bend over backwards to avoid tripping this trap. As a result, the proposed rule effectively places a ten claim limit on initial examinations of all patent applications. You have to wonder if this is the goal sought by the Office.

You can view and/or download a .pdf of the proposed rule here.