Examination Support Document (ESD) Could Add $26,000 to Patent Costs
Even though we’ve covered the “suspicious procedures” at the USPTO regarding the Final Continuations and Claims Limits Rule, more evidence seems to keep coming to light. See Tafas v. Dudas case to enjoin enactment of the USPTO’s new rules.
The proposed Patent Office Rules include a new requirement for patent applicants to prepare an Examination Support Document (ESD) for patent applications containing 5 or more independent claims, or 25 or more total claims.
The ESD requirements, set out at length in a 16-page overview, require the patent applicant to:
- a statement that the applicant performed a pre-examination prior art search including information on search logic, files or database services, and date of search;
- a listing of references deemed most closely related to the subject matter of each of the claims;
- an identification of all the limitations of each of the claims disclosed by each cited reference;
- a detailed explanation pointing out how each of the independent claims is patentable over the cited references; and
- a showing of where each limitation of each of the claims finds support in the patent application.
Under the rules, if a patent application exceeds the 5 independent/25 total claim threshold, then the patent applicant must file an examination support document (ESD). If the newly filed patent application exceeds the threshold, because it contains claims to more than one invention, then the applicant can submit a suggested restriction requirement (SRR) and choose an invention to which there are no more than 5 independent claims or 25 total claims. If an application exceeds the 5/25 claim threshold and does not contain a SRR or ESD, a patent examiner will require the applicant to file an ESD or amend the application to meet the 5/25 claim requirement.
All of this adds up to some major increased costs for patent prosecution. How much extra is a source of friction between all the parties involved.
In one “smoking gun”-type moment, an email from revealed in discovery Tafas/GSK v. USPTO case shows an analysis at the USPTO back in May 2007 regarding a bottom-up cost estimate of preparing an ESD. Looking at what they deem is an “approach will allow [the Patent Office] to model incremental costs more realistically over the applicant universe.”
In Case 1, assuming a patent search is conducted prior to preparation of the application, the results show the cheapest case with 76 claims would cost $8500 ($11,900 with 107 claims). In Case 2, assuming a patent search is not conducted prior to preparation of the application, the results show the cheapest case with 76 claims would cost $19,300 ($26,100 with 107 claims).
See the ESD Estimate Email here.
See more analysis of the USPTO new rules and the patent statistical characteristic data from the USPTO:
- Katznelson Amicus brief: summarizes the major findings of astudy based on data produced by USPTO in the Administrative Record of the Continuations/Claims Rules.
- Appendix E Study
- Dr. Rick Belzer’s paperwork burden analysis of the Rules
- Exhibit 13
- Oops, They Did It Again — Patent Office has “Typographical Error”
- Brief Highlights Patent Office’s “Suspicious Procedures”
- Sides Line Up in Impending Patent Continuations Fight
- USPTO to Publish New Claim and Continuation Rules: Will They Improve Efficiency of Patent Examination?
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- Unwitnessed Notebooks Alone Insufficient To Support Co-Inventorship
- Wall Street Journal Unrealistic on Patent Costs