Patent Law FAQ

What is the significance of the Application Data Sheet (ADS) in correcting or adding a benefit claim?

The Application Data Sheet (ADS) plays a crucial role in correcting or adding a benefit claim after filing. According to MPEP 211.02(a):

A corrected ADS (along with a petition under 37 CFR 1.78 and the petition fee) is required to correct a benefit claim if the benefit claim was not included on the original ADS.

This means that if you need to correct or add a benefit claim that wasn’t included in the original ADS, you must submit:

• A corrected ADS
• A petition under 37 CFR 1.78
• The required petition fee

The corrected ADS should contain all of the information from the original ADS, with the changes to the benefit claim marked in accordance with 37 CFR 1.76(c).

To learn more:

• ADS
• benefit claim
• patent application
• correction
• petition

Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP § 211.04:

Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.

In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:

• A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.

It’s important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.

To learn more:

• benefit claim
• petition
• ADS
• RCE
• reissue application
• certificate of correction

When claiming foreign priority, the application data sheet (ADS) must include specific information to meet the requirements of 37 CFR 1.55(i)(2). The MPEP states that the claim for priority must be presented in an ADS:

identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application

This information is crucial for the USPTO to retrieve the priority document through the Priority Document Exchange program. Ensure that all details are accurate to avoid any issues with your priority claim.

To learn more:

• Application Data Sheet
• ADS
• Foreign Priority Claim
• Priority Document Exchange

What happens if there’s an error in the foreign priority application number?

If there’s an error in the foreign priority application number, it can lead to serious consequences for the priority claim. The MPEP emphasizes the importance of accuracy:

“Errors in foreign priority claims may jeopardize the applicant’s priority claim.” (MPEP 214.04)

Consequences of errors may include:

• Rejection of the priority claim
• Loss of priority date
• Potential issues with patentability if prior art emerges in the intervening period

If an error is discovered, it’s crucial to promptly file a corrected Application Data Sheet (ADS) or a petition to correct the priority claim, depending on the timing and nature of the error. Always double-check the application number against the original foreign priority document to ensure accuracy.

To learn more:

• foreign priority
• error correction
• priority claim
• ADS

What happens if I fail to underline the entire benefit claim in a corrected ADS?

Failing to properly underline the entire benefit claim in a corrected Application Data Sheet (ADS) can have serious consequences. The MPEP 211.02(a) states:

If the corrected ADS fails to identify the benefit claim with underlining of all text inserted, the Office of Patent Application Processing (OPAP) will not recognize such benefit claim and will not enter such benefit claim information in Office records.

This means that if you don’t underline the entire benefit claim:

• The USPTO won’t recognize the benefit claim
• The benefit claim information won’t be entered into official records
• Your application may lose its priority date

To avoid these issues, always ensure that you underline the entire benefit claim when adding it to a corrected ADS, even if parts of the claim were present in the original ADS.

To learn more:

• ADS
• benefit claim
• underlining
• correction
• patent application

How should the foreign priority application number be formatted in an ADS?

When entering the foreign priority application number in an Application Data Sheet (ADS), it’s crucial to follow the proper format to ensure accurate identification. The MPEP states:

“The foreign application number should be identified in an application data sheet (ADS), rather than in a separate paper.” (MPEP 214.04)

The ADS should include:

• The correct application number
• The country or intellectual property authority where the application was filed
• The filing date of the priority application

It’s important to use the exact format as it appears on the foreign priority document to avoid any discrepancies or potential issues with the priority claim.

To learn more:

• foreign priority
• ADS
• application data sheet
• priority claim

The proper submission of a benefit claim depends on the filing date of the application:

• For applications filed on or after September 16, 2012: The benefit claim must be included in an Application Data Sheet (ADS) in compliance with 37 CFR 1.76.
• For applications filed before September 16, 2012: The benefit claim can be submitted either by an amendment to the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76.

The MPEP states: Applicant must still submit the benefit claim in the manner specified in 37 CFR 1.78 (i.e., in an ADS in compliance with 37 CFR 1.76 (or for applications filed prior to September 16, 2012 by an amendment to the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit of a prior application.

To learn more:

• benefit claim
• Application Data Sheet
• ADS
• specification amendment
• 37 CFR 1.76

To learn more:

• 37 CFR 1.76

The requirement for specific reference to prior applications has undergone changes due to recent legislation:

1. For applications filed before September 16, 2012: The specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.
2. For applications filed on or after September 16, 2012: The specific reference to the prior application must be in the application data sheet (ADS).

As stated in the MPEP: Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification. (MPEP 210)

This change was implemented as part of the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act, which became effective on September 16, 2012. The Office revised 37 CFR 1.78 to reflect these changes.

For more information on ADS, visit: ADS.

For more information on application data sheet, visit: application data sheet.

For more information on prior applications, visit: prior applications.

For more information on specific reference, visit: specific reference.

The USPTO handles unintentionally delayed domestic benefit claims similarly to foreign priority claims, but with some specific provisions. According to MPEP 214.02:

‘For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (37 CFR 1.76). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.’

For domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c), a petition to accept an unintentionally delayed claim must include:

• The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application, unless previously submitted;
• The petition fee set forth in 37 CFR 1.17(m); and
• A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the benefit claim was filed was unintentional.

The Director may require additional information where there is a question whether the delay was unintentional.

To learn more:

• unintentionally delayed domestic benefit claim
• petition requirements
• ADS
• petition fee
• unintentional delay statement

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?

When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):

The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).

To properly mark changes in a corrected ADS:

• Insertions: Underline new text
• Deletions: Use strike-through or brackets for removed text
• Existing information: Include all information from the original ADS, even if unchanged

It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.

To learn more:

• ADS
• benefit claim
• correction
• marking changes
• patent application

To correct or add a benefit claim after filing your application, you need to follow specific procedures depending on the timing and circumstances:

1. If you received a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant this request if the proper reference to the prior application was included in the original filing or within the time period required by 37 CFR 1.78.
2. If you’re adding a benefit claim after the time period required by 37 CFR 1.78, you must file a petition and pay the petition fee. The petition must be accompanied by a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or a supplemental ADS for applications filed before that date.

As stated in MPEP 211.02(a): If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required.

Depending on the status of your application, you may also need to file:

• A Request for Continued Examination (RCE) if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction if the application has already issued as a patent.

It’s important to note that you cannot add an incorporation by reference statement to a benefit claim after the filing date, as this would be considered new matter.

For more information on ADS, visit: ADS.

For more information on RCE, visit: RCE.

To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:

• For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.

The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. (MPEP § 211)

For more information on ADS, visit: ADS.

For more information on prior-filed application, visit: prior-filed application.

For more information on specific reference, visit: specific reference.

The process for deleting a benefit claim depends on when your application was filed:

• For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
• For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.

However, be aware of the following considerations:

• The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
• If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
• If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
• Deleting a benefit claim may affect the publication date of the application.

The MPEP also notes an important caveat:

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.

This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.

To learn more:

• delete benefit claim
• ADS
• patent application
• amendment
• specification

How can I correct a timely submitted benefit claim with errors?

If you’ve submitted a benefit claim within the required time period but it contains errors, you can correct it without filing a petition. According to MPEP 211.02(a):

“A petition under 37 CFR 1.78 and the petition fee would not be required for correcting a timely submitted benefit claim for the following situations: (1) Changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”); (2) Changing the filing date of a prior-filed nonprovisional or provisional application; and (3) Changing a benefit claim of a prior-filed provisional application under 35 U.S.C. 120 (e.g., “This application is a continuation of prior-filed provisional application No. —“) to a benefit claim of the same provisional application under 35 U.S.C. 119(e) (e.g., “This application claims the benefit of prior-filed provisional application No. —“) during the pendency of the later-filed application.”

To make these corrections, you should submit a corrected application data sheet (ADS) with the proper markings to show the changes.

To learn more:

• benefit claim
• correction
• application data sheet
• ADS

If you receive a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant such a request if the proper reference to the prior application is included:

• For applications filed on or after September 16, 2012: in an Application Data Sheet (ADS)
• For applications filed prior to September 16, 2012: in the first sentence(s) of the specification or an ADS

This reference must be made within the time period required by 37 CFR 1.78, with a few exceptions. As stated in the MPEP:

The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office.

It’s crucial to review your filing receipt promptly and carefully to avoid the need for a petition and associated fees.

To learn more:

• filing receipt
• benefit claim
• ADS
• patent application
• correction

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

Can I correct a timely benefit claim without a petition?

Yes, in certain circumstances, you can correct a timely benefit claim without filing a petition. The MPEP 211.02(a) provides guidance on this:

If an applicant includes a benefit claim in a timely filed application data sheet (ADS), but the benefit claim contains a typographical error or improper application number, the applicant may correct the benefit claim without a petition by submitting a corrected ADS in compliance with 37 CFR 1.76(c) if the correction is made within the time period set forth in 37 CFR 1.78.

To correct a timely benefit claim without a petition:

• The original benefit claim must have been submitted in a timely filed ADS
• The correction must be for a typographical error or improper application number
• Submit a corrected ADS complying with 37 CFR 1.76(c)
• Make the correction within the time period specified in 37 CFR 1.78

It’s important to note that this option is only available for minor corrections to timely filed benefit claims. For more substantial changes or untimely claims, a petition may still be required.

To learn more:

• benefit claim
• correction
• ADS
• petition
• patent application

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

To correct or add a benefit claim after filing your application, you need to follow specific procedures depending on the timing and circumstances:

1. If you received a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant this request if the proper reference to the prior application was included in the original filing or within the time period required by 37 CFR 1.78.
2. If you’re adding a benefit claim after the time period required by 37 CFR 1.78, you must file a petition and pay the petition fee. The petition must be accompanied by a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or a supplemental ADS for applications filed before that date.

As stated in MPEP 211.02(a): If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required.

Depending on the status of your application, you may also need to file:

• A Request for Continued Examination (RCE) if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction if the application has already issued as a patent.

It’s important to note that you cannot add an incorporation by reference statement to a benefit claim after the filing date, as this would be considered new matter.

For more information on ADS, visit: ADS.

For more information on RCE, visit: RCE.

To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:

• For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.

The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. (MPEP § 211)

For more information on ADS, visit: ADS.

For more information on prior-filed application, visit: prior-filed application.

For more information on specific reference, visit: specific reference.

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:

• They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
• They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.

The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.

To learn more:

• obligated assignee
• patent application
• inventor rights
• ADS

An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:

‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’

The ADS must include:

• The name of the inventor(s)
• A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
• If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention

The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.

To learn more:

• Application Data Sheet
• ADS
• assignee-filed application
• patent procedure

When filing a patent application, you must specify a correspondence address in one of two ways:

• In an application data sheet (ADS) under 37 CFR 1.76, or
• Elsewhere in the application papers in a clearly identifiable manner

As stated in 37 CFR 1.33(a): When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.

This address will be used by the USPTO to send all official communications regarding your application.

To learn more:

• correspondence address
• patent application
• ADS
• application data sheet

Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?

Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:

• The practitioner must submit a request to withdraw.
• The request must comply with 37 CFR 1.36.
• The USPTO must approve the withdrawal.

According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”

It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.

To learn more:

• patent practitioner
• withdrawal
• Application Data Sheet
• ADS

An Application Data Sheet (ADS) for patent applications filed before September 16, 2012, can include various types of bibliographic information. According to MPEP 601.05(b), the following information can be included:

• Applicant information
• Correspondence address
• Application information (e.g., title, docket number, secrecy order indicator)
• Representative information
• Domestic benefit information
• Foreign priority information
• Assignee information

The MPEP states: “The application data sheet may be submitted subsequent to the filing of the application, within the time period set forth in 37 CFR 1.53(f), to provide the bibliographic data.”

It’s important to note that while an ADS can include this information, some details may still need to be provided or confirmed in other application documents, depending on the specific circumstances of the application.

To learn more:

• Application Data Sheet
• ADS
• Bibliographic Information
• Patent Application

The Application Data Sheet (ADS) plays a crucial role in establishing priority and benefit claims in patent applications:

• Providing domestic benefit information in the ADS constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and 37 CFR 1.78.
• Providing foreign priority information in the ADS constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.
• The most recent ADS will govern with respect to foreign priority or domestic benefit claims in case of inconsistencies.

37 CFR 1.76(b)(5) states: “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78.”

Similarly, 37 CFR 1.76(b)(6) states: “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.”

It’s crucial to ensure that priority and benefit claims are accurately listed in the ADS to properly establish these claims in the patent application.

To learn more:

• ADS
• Application Data Sheet
• priority claims
• benefit claims
• patent application

What is the significance of the Application Data Sheet (ADS) in correcting or adding a benefit claim?

The Application Data Sheet (ADS) plays a crucial role in correcting or adding a benefit claim after filing. According to MPEP 211.02(a):

A corrected ADS (along with a petition under 37 CFR 1.78 and the petition fee) is required to correct a benefit claim if the benefit claim was not included on the original ADS.

This means that if you need to correct or add a benefit claim that wasn’t included in the original ADS, you must submit:

• A corrected ADS
• A petition under 37 CFR 1.78
• The required petition fee

The corrected ADS should contain all of the information from the original ADS, with the changes to the benefit claim marked in accordance with 37 CFR 1.76(c).

To learn more:

• ADS
• benefit claim
• patent application
• correction
• petition

An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:

• They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
• They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.

The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.

To learn more:

• obligated assignee
• patent application
• inventor rights
• ADS

An Application Data Sheet (ADS) in patent applications filed before September 16, 2012 serves several important purposes:

• It provides bibliographic data to be used for capturing and processing application information.
• It allows applicants to submit certain information without an oath or declaration or application transmittal letter.
• It may be used to provide or correct bibliographic data, particularly if submitted within one month of the filing date.

According to MPEP 601.05(b): “An application data sheet is a sheet or set of sheets containing bibliographic data, which is arranged in a format specified by the Office. When an application data sheet is provided in a patent application, the application data sheet becomes part of the application.”

To learn more:

• Application Data Sheet
• ADS
• Patent Application
• Bibliographic Data

An Application Data Sheet (ADS) serves as a crucial document in patent applications filed on or after September 16, 2012. Its primary purposes are:

• To provide bibliographic data for the application
• To facilitate efficient processing and examination of the application
• To ensure accurate capture of important information by the Office of Patent Application Processing (OPAP)

According to MPEP 601.05(a), “An application data sheet is a sheet or sheets that may be submitted in a provisional application (except as provided in 37 CFR 1.53(c)(1) ), a nonprovisional application, or a national stage application.” The ADS helps streamline the application process and reduces errors in the handling of patent applications.

To learn more:

• ADS
• Application Data Sheet
• patent application
• bibliographic data

Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP § 211.04:

Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.

In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:

• A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.

It’s important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.

To learn more:

• benefit claim
• petition
• ADS
• RCE
• reissue application
• certificate of correction

An Application Data Sheet (ADS) is a voluntary submission for patent applications filed before September 16, 2012, that contains bibliographic data arranged in a specific format. According to MPEP 601.05(b), “An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office.” The ADS becomes part of the application and must be titled “Application Data Sheet.”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application
• Bibliographic Data

An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:

‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’

The ADS must include:

• The name of the inventor(s)
• A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
• If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention

The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.

To learn more:

• Application Data Sheet
• ADS
• assignee-filed application
• patent procedure

An Application Data Sheet (ADS) is a document containing bibliographic data for a patent application, arranged in a format specified by the USPTO. According to MPEP 601.05, an ADS:

• May be submitted voluntarily in provisional or nonprovisional applications
• Must be submitted when required by 37 CFR 1.55 and 1.78 to claim priority to or benefit of a prior-filed application
• Must be titled “Application Data Sheet”
• Becomes part of the application when provided

The USPTO prefers the use of an ADS in all applications to help facilitate electronic capturing of important data.

To learn more:

• ADS
• Application Data Sheet
• Patent Application
• Bibliographic Data
• USPTO

To learn more:

• priority claim
• benefit claim

An Application Data Sheet (ADS) is a document that provides bibliographic data for patent applications. Its use and importance are described in the MPEP:

“If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application with one exception for applications filed before September 16, 2012.”

Key points about the ADS include:

• It simplifies the filing process by consolidating important information in one place.
• Information in the ADS generally takes precedence over conflicting information elsewhere in the application.
• For applications filed before September 16, 2012, citizenship of inventors must still be provided in the oath or declaration, even if included in the ADS.
• The ADS controls most information except for the naming of inventors, which is governed by 37 CFR 1.41.

For more detailed information on the Application Data Sheet, refer to MPEP § 601.05.

To learn more:

• Application Data Sheet
• ADS
• patent application
• bibliographic data
• inventor information

For applications filed before September 16, 2012, the Application Data Sheet (ADS) should include the following information:

• Applicant information
• Correspondence address
• Application information
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b): The ADS must include all of the section headings listed in 37 CFR 1.76(b), even if no information is being provided for some of the sections. This ensures consistency and completeness in the application filing process.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application

An Application Data Sheet (ADS) for a patent application filed on or after September 16, 2012, should include specific bibliographic data. According to MPEP 601.05(a), the ADS must contain the following information:

• Inventor information: Full name, residence, and mailing address of each inventor
• Applicant information: Name and address of the applicant (if different from the inventor)
• Correspondence address
• Application information: Title of the invention, attorney docket number, type of application
• Representative information: Registration number and name of each practitioner
• Domestic benefit/national stage information: Prior-filed application number and filing date
• Foreign priority information: Foreign application number, country, and filing date
• Assignee information: Name and address of the assignee of the entire right, title, and interest

The MPEP states: “An application data sheet must be labeled ‘Application Data Sheet’ and should provide the bibliographic data, in the order and with the headings specified in this section, to be entitled to the benefits provided by the application data sheet.” Ensuring all required information is accurately provided in the ADS is crucial for proper processing of the application and establishing priority claims.

To learn more:

• ADS
• Application Data Sheet
• patent application
• bibliographic data

When claiming foreign priority, the application data sheet (ADS) must include specific information to meet the requirements of 37 CFR 1.55(i)(2). The MPEP states that the claim for priority must be presented in an ADS:

identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application

This information is crucial for the USPTO to retrieve the priority document through the Priority Document Exchange program. Ensure that all details are accurate to avoid any issues with your priority claim.

To learn more:

• Application Data Sheet
• ADS
• Foreign Priority Claim
• Priority Document Exchange

What information is required on the Application Data Sheet (ADS) regarding inventors?

The Application Data Sheet (ADS) is a crucial document in patent applications, and it must include specific information about the inventors. According to MPEP 602.08(a), the following information is required for each inventor:

• Legal name
• Residence (city and state or country)
• Mailing address
• Citizenship

The MPEP states:

“The inventor’s legal name for the ADS should be the name as it appears on a legal document such as a birth certificate, marriage certificate, court order, etc.”

It’s important to provide accurate and complete information on the ADS to avoid potential issues with the patent application process. Any changes to inventor information after filing may require submitting a corrected ADS.

To learn more:

• Application Data Sheet
• ADS
• inventor information
• patent application

An Application Data Sheet (ADS) for pre-AIA applications includes several categories of bibliographic information:

• Applicant information (name, residence, mailing address, and citizenship)
• Correspondence information
• Application information (title, classification, drawings, etc.)
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b), “Bibliographic data as used in paragraph (a) of this section includes: (1) Applicant information… (2) Correspondence information… (3) Application information… (4) Representative information… (5) Domestic priority information… (6) Foreign priority information… (7) Assignee information…”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Bibliographic Data
• Patent Application Information

What happens if there’s an error in the foreign priority application number?

If there’s an error in the foreign priority application number, it can lead to serious consequences for the priority claim. The MPEP emphasizes the importance of accuracy:

“Errors in foreign priority claims may jeopardize the applicant’s priority claim.” (MPEP 214.04)

Consequences of errors may include:

• Rejection of the priority claim
• Loss of priority date
• Potential issues with patentability if prior art emerges in the intervening period

If an error is discovered, it’s crucial to promptly file a corrected Application Data Sheet (ADS) or a petition to correct the priority claim, depending on the timing and nature of the error. Always double-check the application number against the original foreign priority document to ensure accuracy.

To learn more:

• foreign priority
• error correction
• priority claim
• ADS

When there are inconsistencies between the Application Data Sheet (ADS) and other documents, the ADS generally takes precedence. According to MPEP 601.05(a):

Information in the Application Data Sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration.

However, it’s important to note that this only applies when the inconsistent information is supplied at the same time. If the inconsistency arises later, a corrected ADS may be required to update the information.

To learn more:

• Application Data Sheet
• ADS
• Inconsistencies
• Patent Application

What happens if there are inconsistencies between an ADS and other documents?

When inconsistencies exist between an Application Data Sheet (ADS) and other documents, the ADS generally takes precedence. According to MPEP 601.05:

“If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.”

However, there are exceptions to this rule:

• For inventorship, the most recent submission will control.
• For foreign priority and domestic benefit claims, the most recent submission will control, provided it was timely filed.

It’s crucial to ensure all information in the ADS is accurate to avoid potential issues later in the application process.

To learn more:

• ADS
• inconsistencies
• document precedence
• inventorship
• priority claims

When inconsistencies exist between an Application Data Sheet (ADS) and other documents in a patent application, the ADS generally takes precedence. According to MPEP 601.05:

‘Where an ADS is used, the ADS data will govern when inconsistent with the information provided elsewhere in the application, except when the ADS is accompanied by a clear indication that the information in the ADS is not to be used.’

However, it’s important to note that if there’s a clear indication that the information in the ADS should not be used, then other documents may take precedence. Applicants should strive for consistency across all application documents to avoid confusion and potential issues during examination.

To learn more:

• ADS
• inconsistencies
• application documents
• precedence

If you submit an Application Data Sheet (ADS) after the filing date of your patent application, it is considered a supplemental ADS. According to MPEP 601.05(a):

A supplemental ADS that is filed after the initial filing date of the application is not part of the original application papers, but is the paper that will be used to correct the bibliographic information in the Office’s records.

This means that while the supplemental ADS can be used to update or correct information, it doesn’t become part of the original application. Any changes made through a supplemental ADS may require additional fees or actions, such as a petition under 37 CFR 1.78 for late claims of priority.

To learn more:

• Application Data Sheet
• ADS
• Supplemental ADS
• Patent Application
• Filing Date

What happens if I fail to underline the entire benefit claim in a corrected ADS?

Failing to properly underline the entire benefit claim in a corrected Application Data Sheet (ADS) can have serious consequences. The MPEP 211.02(a) states:

If the corrected ADS fails to identify the benefit claim with underlining of all text inserted, the Office of Patent Application Processing (OPAP) will not recognize such benefit claim and will not enter such benefit claim information in Office records.

This means that if you don’t underline the entire benefit claim:

• The USPTO won’t recognize the benefit claim
• The benefit claim information won’t be entered into official records
• Your application may lose its priority date

To avoid these issues, always ensure that you underline the entire benefit claim when adding it to a corrected ADS, even if parts of the claim were present in the original ADS.

To learn more:

• ADS
• benefit claim
• underlining
• correction
• patent application

What happens if an application data sheet (ADS) is not consistent with the information provided elsewhere in the application?

If there are inconsistencies between the ADS and other documents in the application, the ADS will generally control, except for the following situations:

• The ADS is inconsistent with the oath or declaration accompanying the application, and the oath or declaration is accompanied by a statement explaining the inconsistency. In this case, the oath or declaration will control.
• The ADS is inconsistent with information provided in the specification, in which case the information in the specification will control.

As stated in MPEP 601.05(b):

“If an ADS is inconsistent with the information provided elsewhere in the application, the ADS will control except for: (1) the naming of the inventors (37 CFR 1.41(a)(1) governs), and (2) the information that is contained in an oath or declaration accompanying the application (37 CFR 1.63 and 1.67 govern).”

It’s crucial to ensure consistency across all application documents to avoid potential confusion or delays in the examination process.

To learn more:

• ADS
• application data sheet
• inconsistencies
• patent application

To correct or update an inventor’s name in a patent application (other than reissue applications), you can use Form PTO/AIA/40. As stated in MPEP 602.01(c)(2):

See MPEP § 602.01(c)(1) for a copy of form PTO/AIA/40 that may be used to correct or update in inventor’s name or change the order of names in applications (other than reissue applications).

This form should be submitted along with:

• An application data sheet (ADS) in accordance with 37 CFR 1.76 that identifies each inventor by their legal name in the desired order.
• The processing fee set forth in 37 CFR 1.17(i).

Remember to clearly identify the desired inventor name change in your request.

To learn more:

• Form PTO/AIA/40
• inventor name correction
• patent application
• ADS
• application data sheet

What documentation is required for inventorship correction in a patent application?

The documentation required for inventorship correction in a patent application includes:

• A request to correct inventorship under 37 CFR 1.48(a)
• An application data sheet (ADS) with the correct inventorship information
• A statement of facts from the new inventor(s) if being added
• Written consent from any assignees

The MPEP states: The inventorship of an application may be corrected by filing a request under 37 CFR 1.48(a). The request must include: (1) An application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name, and (2) the processing fee set forth in 37 CFR 1.17(i). Additionally, When an inventor is being added, applicant must submit a statement from each person being added as an inventor that the inventorship error occurred without deceptive intention on his or her part. It’s important to note that while these are the basic requirements, additional documentation may be necessary depending on the specific circumstances of the correction.

To learn more:

• inventorship correction
• documentation
• patent application
• ADS

The signature requirements for an Application Data Sheet (ADS) are as follows:

• An ADS must be signed in compliance with 37 CFR 1.33(b).
• An unsigned ADS will be treated only as a transmittal letter.
• Proper signing is crucial for the ADS to be effective in providing application information.

37 CFR 1.76(e) states: “An application data sheet must be signed in compliance with § 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.”

It’s important to note that an unsigned ADS will not be effective for providing crucial information such as inventor names, applicant details, or priority claims. Therefore, ensuring proper signature on the ADS is essential for it to serve its intended purpose in the patent application process.

To learn more:

• ADS
• Application Data Sheet
• signature requirements
• patent application

For pre-AIA applications, submitting a supplemental Application Data Sheet (ADS) must follow specific requirements:

1. Timing: MPEP 601.05(b) states, “Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under pre-AIA 37 CFR 1.63 or 1.67.”

2. Title: The supplemental ADS must be titled “Supplemental Application Data Sheet.”

3. Content: It must contain all section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading.

4. Format: The supplemental ADS must indicate changes, “preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets.”

5. Signature: The supplemental ADS must be signed as it is considered a paper filed in the application.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Supplemental ADS
• Patent Application

To correct inventorship in a nonprovisional patent application filed on or after September 16, 2012, the following requirements must be met:

• Submit a request to correct or change the inventorship
• Include a signed application data sheet (ADS) that:
  • Identifies each inventor by their legal name
  • Provides the residence and mailing address of each inventor
  • Shows changes with underlining for insertions and strike-through or brackets for deletions
• Pay the processing fee set forth in 37 CFR 1.17(i)

As stated in the MPEP: A request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1)) and the processing fee set forth in 37 CFR 1.17(i).

To learn more:

• inventorship correction
• nonprovisional application
• ADS
• processing fee

Providing incorrect information in an Application Data Sheet (ADS) can have serious consequences for your patent application. The MPEP 601.05(a) emphasizes the importance of accuracy:

Applicants should submit a new ADS whenever the previously submitted information is no longer accurate. Submission of an inaccurate ADS may delay processing of the application and may require the applicant to file a petition under 37 CFR 1.78 to correct the applicant information.

Consequences of incorrect ADS information may include:

• Delays in application processing
• Potential loss of priority claims
• Incorrect inventorship records
• Need for additional petitions and fees to correct errors
• Possible issues with patent enforcement if errors are not corrected

It’s crucial to review your ADS carefully before submission and promptly correct any errors discovered using a supplemental ADS or other appropriate means.

To learn more:

• Application Data Sheet
• ADS
• Incorrect Information
• Patent Application
• Consequences

While submitting an Application Data Sheet (ADS) is not mandatory for all applications, there can be consequences for not including one. According to MPEP 601.05(a):

If an application is filed without an application data sheet, the applicant will not have the benefit of:

• The filing date of any provisional application;
• The filing date of any non-provisional application;
• The filing date of any international application;
• The 35 U.S.C. 119, 120, 121, 365(c), or 386(c) priority claim; and
• The foreign priority claim.

These benefits can be crucial for establishing priority dates and protecting your invention. Without an ADS, you may need to submit additional paperwork later to claim these benefits, which could potentially lead to delays or complications in the application process.

To learn more:

• Application Data Sheet
• ADS
• Patent Application
• Priority Claims

What are the consequences of not submitting an Application Data Sheet (ADS) in applications filed before September 16, 2012?

For applications filed before September 16, 2012, submitting an Application Data Sheet (ADS) was not mandatory. The MPEP 601.05(b) states:

In applications filed before September 16, 2012, the application data sheet is not a requirement of 37 CFR 1.51(b) for a complete application, but is rather supplemental to the application and is used to capture bibliographic information.

However, not submitting an ADS could lead to the following consequences:

• Manual data entry: The USPTO would have to manually enter bibliographic information from other application papers, which could potentially lead to errors.
• Delayed processing: Without an ADS, the application processing might take longer as the information needs to be gathered from various sources.
• Potential for inconsistencies: Information scattered across different documents might lead to inconsistencies in the application record.
• Missed benefits: Certain benefits, such as easily claiming domestic benefit or foreign priority, might be harder to establish without an ADS.

While not submitting an ADS wouldn’t result in an incomplete application, it was generally recommended to include one for smoother processing and to ensure accurate capture of bibliographic information.

To learn more:

• Application Data Sheet
• ADS
• pre-AIA
• patent application
• bibliographic information

What are the consequences of inconsistencies between an ADS and other documents in a patent application?

Inconsistencies between an Application Data Sheet (ADS) and other documents in a patent application can lead to processing delays and potential issues. The MPEP states:

“If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.” (MPEP 601.05(a))

This means:

• The ADS takes precedence over other documents for bibliographic data.
• Inconsistencies may require corrections, potentially delaying application processing.
• Applicants should ensure all documents are consistent to avoid complications.

It’s crucial to review all application documents carefully before submission to maintain consistency and avoid potential issues in the patent examination process.

To learn more:

• ADS
• Application Data Sheet
• inconsistencies
• patent application
• bibliographic data

How should the foreign priority application number be formatted in an ADS?

When entering the foreign priority application number in an Application Data Sheet (ADS), it’s crucial to follow the proper format to ensure accurate identification. The MPEP states:

“The foreign application number should be identified in an application data sheet (ADS), rather than in a separate paper.” (MPEP 214.04)

The ADS should include:

• The correct application number
• The country or intellectual property authority where the application was filed
• The filing date of the priority application

It’s important to use the exact format as it appears on the foreign priority document to avoid any discrepancies or potential issues with the priority claim.

To learn more:

• foreign priority
• ADS
• application data sheet
• priority claim

The proper submission of a benefit claim depends on the filing date of the application:

• For applications filed on or after September 16, 2012: The benefit claim must be included in an Application Data Sheet (ADS) in compliance with 37 CFR 1.76.
• For applications filed before September 16, 2012: The benefit claim can be submitted either by an amendment to the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76.

The MPEP states: Applicant must still submit the benefit claim in the manner specified in 37 CFR 1.78 (i.e., in an ADS in compliance with 37 CFR 1.76 (or for applications filed prior to September 16, 2012 by an amendment to the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit of a prior application.

To learn more:

• benefit claim
• Application Data Sheet
• ADS
• specification amendment
• 37 CFR 1.76

To learn more:

• 37 CFR 1.76

The requirement for specific reference to prior applications has undergone changes due to recent legislation:

1. For applications filed before September 16, 2012: The specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.
2. For applications filed on or after September 16, 2012: The specific reference to the prior application must be in the application data sheet (ADS).

As stated in the MPEP: Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification. (MPEP 210)

This change was implemented as part of the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act, which became effective on September 16, 2012. The Office revised 37 CFR 1.78 to reflect these changes.

For more information on ADS, visit: ADS.

For more information on application data sheet, visit: application data sheet.

For more information on prior applications, visit: prior applications.

For more information on specific reference, visit: specific reference.

The USPTO handles unintentionally delayed domestic benefit claims similarly to foreign priority claims, but with some specific provisions. According to MPEP 214.02:

‘For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (37 CFR 1.76). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.’

For domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c), a petition to accept an unintentionally delayed claim must include:

• The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application, unless previously submitted;
• The petition fee set forth in 37 CFR 1.17(m); and
• A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the benefit claim was filed was unintentional.

The Director may require additional information where there is a question whether the delay was unintentional.

To learn more:

• unintentionally delayed domestic benefit claim
• petition requirements
• ADS
• petition fee
• unintentional delay statement

The USPTO has specific rules for handling inconsistent information between an Application Data Sheet (ADS) and other documents:

1. Generally, the most recent submission will govern.
2. For foreign priority or domestic benefit claims, the most recent ADS will govern.
3. Inventorship and inventor names are governed by 37 CFR 1.41 and 1.48.
4. When submitted simultaneously, the ADS will govern over other documents.

37 CFR 1.76(d)(1) states: “The most recent submission will govern with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that: (i) The most recent application data sheet will govern with respect to foreign priority (§ 1.55) or domestic benefit (§ 1.78) claims; and (ii) The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48.”

If inconsistencies are found, applicants should submit a corrected ADS to ensure accurate information is captured by the Office.

To learn more:

• ADS
• Application Data Sheet
• inconsistent information
• USPTO
• patent application

The USPTO has specific rules for handling inconsistencies between the Application Data Sheet (ADS) and other documents, as outlined in MPEP 601.05:

1. The most recent submission generally governs for inconsistencies between an ADS and other documents.
2. For foreign priority or domestic benefit claims, the most recent ADS governs.
3. For inventorship and inventor names, 37 CFR 1.41 and 1.48 govern.
4. When inconsistent information is supplied simultaneously, the ADS will control over a designation of correspondence address or the inventor’s oath or declaration.
5. The Office captures bibliographic information from the ADS and generally does not check it against other documents.

If you need to correct inconsistencies, submit a corrected ADS as described in 37 CFR 1.76(c)(1). Note that certain changes, such as inventorship, may require specific forms or petitions in addition to a corrected ADS.

To learn more:

• ADS
• Application Data Sheet
• Inconsistencies
• USPTO Procedures
• Patent Application

For applications filed before September 16, 2012 (pre-AIA applications), the USPTO has specific guidelines for handling inconsistencies between the Application Data Sheet (ADS) and other documents. According to MPEP 601.05(b):

If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.

However, there are exceptions to this rule:

• Inventorship: The ADS does not control if it’s inconsistent with the inventorship set forth in an executed oath or declaration.
• Correspondence address: A clear direction to use a different address will override the ADS.
• Small entity status: Any small entity assertion or claim will control over the ADS.

It’s crucial for applicants to ensure consistency across all application documents to avoid potential issues during the examination process.

To learn more:

• ADS
• Inconsistencies
• Pre-AIA
• Patent Application

The Application Data Sheet (ADS) plays an important role in establishing and changing inventorship in patent applications:

• The ADS should include inventor information, including legal name, residence, and mailing address of each inventor.
• The naming of inventorship is governed by 37 CFR 1.41.
• Changes to inventorship or the names of inventors are governed by 37 CFR 1.48.
• In case of inconsistencies, the most recent submission will generally govern, except for inventorship issues.

37 CFR 1.76(d)(1) states: “The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48.”

It’s important to note that while the ADS is used to provide inventor information, any changes to inventorship must comply with the specific requirements of 37 CFR 1.48, which may require additional documentation beyond just updating the ADS.

To learn more:

• ADS
• Application Data Sheet
• inventorship
• patent application
• inventor information

For pre-AIA applications, the Application Data Sheet (ADS) plays a crucial role in establishing priority claims:

1. For domestic priority: MPEP 601.05(b) states, “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120.” This means that including domestic priority information in the ADS satisfies the requirement for a specific reference to earlier filed applications.

2. For foreign priority: The MPEP notes, “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.”

In both cases, including priority information in the ADS eliminates the need to make these claims elsewhere in the application, such as in the specification.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Priority Claims
• Domestic Priority
• Foreign Priority

The Application Data Sheet (ADS) plays a crucial role in naming inventors for patent applications filed on or after September 16, 2012. According to MPEP 601.05(a):

“The naming of the inventors in the application data sheet is the naming of the actual inventors of the subject matter of the application. The inventorship determined from the application data sheet will be used as the inventorship on the patent if the application is granted as a patent.”

This means that the ADS serves as the official document for declaring inventorship. It’s important to note that:

• The ADS replaces the need for a separate inventor’s oath or declaration for naming inventors
• Any changes to inventorship after filing must be done through a proper request under 37 CFR 1.48
• Accuracy in naming inventors is crucial, as incorrect inventorship can affect the validity of the patent

Applicants should ensure that the inventorship information in the ADS is complete and accurate at the time of filing to avoid potential complications later in the patent process.

To learn more:

• ADS
• Application Data Sheet
• inventorship
• patent application

In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly impact the priority claim process. The ADS can be used to:

• Provide domestic benefit information
• Include foreign priority information
• Correct or update priority claims within certain timeframes

According to MPEP 601.05(b): “For applications filed before September 16, 2012, an application data sheet may be used to provide or correct benefit claim information, such as cross-references to one or more prior-filed applications… The benefit claim must be set forth in the ADS in order to be considered properly submitted.”

It’s crucial to note that while the ADS can be used to submit priority information, applicants must still comply with other statutory requirements and deadlines for claiming priority. The ADS provides a centralized location for this information, potentially simplifying the application process and reducing errors in priority claims.

To learn more:

• Application Data Sheet
• ADS
• Priority Claim
• Domestic Benefit
• Foreign Priority

In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly affect the oath or declaration requirements. Specifically:

• An ADS can eliminate the need for certain information in the oath or declaration.
• It allows for the submission of some bibliographic data without an oath or declaration.

The MPEP 601.05(b) states: “If an application data sheet is used in an application filed before September 16, 2012 (in compliance with pre-AIA 37 CFR 1.76) to supply or change the information in 37 CFR 1.63(c), and the oath or declaration under 37 CFR 1.63 refers to the application data sheet, the oath or declaration does not need to be supplemented to include the information supplied in the application data sheet.”

This means that if the oath or declaration references the ADS, it doesn’t need to be updated with information already provided in the ADS, streamlining the application process.

To learn more:

• Application Data Sheet
• ADS
• Oath
• Declaration
• Patent Application

When filing a patent application, you must specify a correspondence address in one of two ways:

• In an application data sheet (ADS) under 37 CFR 1.76, or
• Elsewhere in the application papers in a clearly identifiable manner

As stated in 37 CFR 1.33(a): When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.

This address will be used by the USPTO to send all official communications regarding your application.

To learn more:

• correspondence address
• patent application
• ADS
• application data sheet

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?

When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):

The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).

To properly mark changes in a corrected ADS:

• Insertions: Underline new text
• Deletions: Use strike-through or brackets for removed text
• Existing information: Include all information from the original ADS, even if unchanged

It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.

To learn more:

• ADS
• benefit claim
• correction
• marking changes
• patent application

To correct or update information in an Application Data Sheet (ADS), follow these guidelines from MPEP 601.05:

1. Submit a new ADS titled “Supplemental Application Data Sheet”
2. Include all sections listed in 37 CFR 1.76(b), even if some sections have no changed data
3. Identify changes with underlining for insertions and strike-through or brackets for text removed
4. Make changes relative to the most recent filing receipt
5. Submit the corrected ADS until payment of the issue fee

Note that certain changes, such as inventorship changes, foreign priority and domestic benefit information changes, and correspondence address changes, must comply with specific rules and may require additional forms or petitions.

The USPTO recommends using the corrected Web-based ADS when possible, as it pre-populates with information of record and automatically formats changes.

To learn more:

• ADS
• Application Data Sheet
• Corrections
• Updates
• Patent Application

To correct or add a benefit claim after filing your application, you need to follow specific procedures depending on the timing and circumstances:

1. If you received a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant this request if the proper reference to the prior application was included in the original filing or within the time period required by 37 CFR 1.78.
2. If you’re adding a benefit claim after the time period required by 37 CFR 1.78, you must file a petition and pay the petition fee. The petition must be accompanied by a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or a supplemental ADS for applications filed before that date.

As stated in MPEP 211.02(a): If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required.

Depending on the status of your application, you may also need to file:

• A Request for Continued Examination (RCE) if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction if the application has already issued as a patent.

It’s important to note that you cannot add an incorporation by reference statement to a benefit claim after the filing date, as this would be considered new matter.

For more information on ADS, visit: ADS.

For more information on RCE, visit: RCE.

To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:

• For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.

The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. (MPEP § 211)

For more information on ADS, visit: ADS.

For more information on prior-filed application, visit: prior-filed application.

For more information on specific reference, visit: specific reference.

For patent applications filed on or after September 16, 2012, joint inventors have more flexibility in executing oaths or declarations. The MPEP states: “For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information.” This means each inventor can submit their own oath or declaration, naming only themselves, as long as a complete Application Data Sheet (ADS) is filed with all inventor information. However, if such an ADS is not filed, then each oath or declaration must name all of the inventors, as per 37 CFR 1.63(a) and (b).

To learn more:

• Joint Inventors
• Oath
• Declaration
• Application Data Sheet
• ADS

The process for deleting a benefit claim depends on when your application was filed:

• For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
• For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.

However, be aware of the following considerations:

• The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
• If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
• If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
• Deleting a benefit claim may affect the publication date of the application.

The MPEP also notes an important caveat:

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.

This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.

To learn more:

• delete benefit claim
• ADS
• patent application
• amendment
• specification

To correct inventorship in a nonprovisional patent application, you need to submit a request under 37 CFR 1.48(a). The request should include:

• A signed application data sheet (ADS) with the correct inventorship information
• The processing fee set forth in 37 CFR 1.17(i)

As stated in the MPEP, The application data sheet submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.

To learn more:

• inventorship correction
• nonprovisional application
• ADS
• processing fee

How can I correct a timely submitted benefit claim with errors?

If you’ve submitted a benefit claim within the required time period but it contains errors, you can correct it without filing a petition. According to MPEP 211.02(a):

“A petition under 37 CFR 1.78 and the petition fee would not be required for correcting a timely submitted benefit claim for the following situations: (1) Changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”); (2) Changing the filing date of a prior-filed nonprovisional or provisional application; and (3) Changing a benefit claim of a prior-filed provisional application under 35 U.S.C. 120 (e.g., “This application is a continuation of prior-filed provisional application No. —“) to a benefit claim of the same provisional application under 35 U.S.C. 119(e) (e.g., “This application claims the benefit of prior-filed provisional application No. —“) during the pendency of the later-filed application.”

To make these corrections, you should submit a corrected application data sheet (ADS) with the proper markings to show the changes.

To learn more:

• benefit claim
• correction
• application data sheet
• ADS

If you receive a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant such a request if the proper reference to the prior application is included:

• For applications filed on or after September 16, 2012: in an Application Data Sheet (ADS)
• For applications filed prior to September 16, 2012: in the first sentence(s) of the specification or an ADS

This reference must be made within the time period required by 37 CFR 1.78, with a few exceptions. As stated in the MPEP:

The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office.

It’s crucial to review your filing receipt promptly and carefully to avoid the need for a petition and associated fees.

To learn more:

• filing receipt
• benefit claim
• ADS
• patent application
• correction

For pre-AIA applications, the resolution of inconsistencies between the Application Data Sheet (ADS) and other documents is governed by specific rules:

1. General rule: MPEP 601.05(b) states, “The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67, except as provided by pre-AIA 37 CFR 1.76(d)(3).”

2. Exception for inventor information: “The oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship.”

3. Correction process: If inconsistencies exist, a supplemental ADS should be submitted to conform the information with the correct data in other documents.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Inconsistencies
• Inventor Information

Yes, some deficiencies or inaccuracies in an inventor’s oath or declaration can be corrected using an Application Data Sheet (ADS). The MPEP states: “Some deficiencies or inaccuracies can be corrected with an application data sheet (ADS) in accordance with 37 CFR 1.76.” For more detailed information on using an ADS, the MPEP refers to MPEP § 601.05.

To learn more:

• Application Data Sheet
• ADS
• Inventor’s Oath
• Declaration
• Correction

Yes, the USPTO allows the use of certain alternative forms for submitting application data, as described in MPEP 601.05:

1. Patent Law Treaty Model International Forms can be used to present priority or benefit claims, references to previously filed applications, and applicant information.
2. The Patent Cooperation Treaty Request Form can be used in national stage applications to present benefit claims and applicant information.

However, there are specific requirements and limitations:

• When using a Patent Cooperation Treaty Request Form in an application under 35 U.S.C. 111, it must be accompanied by a clear indication that treatment as an application under 35 U.S.C. 111 is desired.
• If there are inconsistencies between an ADS and these forms, the ADS will govern.

While these alternative forms are accepted, the USPTO generally prefers the use of its official ADS form for clarity and consistency in processing.

To learn more:

• ADS
• Application Data Sheet
• Patent Law Treaty
• Patent Cooperation Treaty
• USPTO Forms

Yes, you can use an Application Data Sheet (ADS) to correct inventor information in your patent application. The MPEP 601.05(a) states:

If an ADS is filed after the initial filing date of the application, it must identify the information that is being changed (added, deleted, or modified) with underlining for insertions, and strike-through or brackets for text removed.

To correct inventor information:

• Use a supplemental ADS if filing after the initial application date
• Clearly mark changes with underlining for additions and strike-through for removals
• Ensure all inventor information is consistent across all documents
• Be aware that some changes may require additional forms or fees

For significant changes to inventorship, you may need to file a request under 37 CFR 1.48 along with the ADS.

To learn more:

• Application Data Sheet
• ADS
• Inventor Information
• Patent Application
• Correction

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

Can I correct a timely benefit claim without a petition?

Yes, in certain circumstances, you can correct a timely benefit claim without filing a petition. The MPEP 211.02(a) provides guidance on this:

If an applicant includes a benefit claim in a timely filed application data sheet (ADS), but the benefit claim contains a typographical error or improper application number, the applicant may correct the benefit claim without a petition by submitting a corrected ADS in compliance with 37 CFR 1.76(c) if the correction is made within the time period set forth in 37 CFR 1.78.

To correct a timely benefit claim without a petition:

• The original benefit claim must have been submitted in a timely filed ADS
• The correction must be for a typographical error or improper application number
• Submit a corrected ADS complying with 37 CFR 1.76(c)
• Make the correction within the time period specified in 37 CFR 1.78

It’s important to note that this option is only available for minor corrections to timely filed benefit claims. For more substantial changes or untimely claims, a petition may still be required.

To learn more:

• benefit claim
• correction
• ADS
• petition
• patent application

Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):

37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).

To change the order of inventors’ names, you must:

• Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
• Pay the processing fee set forth in 37 CFR 1.17(i).

Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.

To learn more:

• inventor order
• patent application
• name change
• ADS
• application data sheet

Yes, an application data sheet (ADS) can be used to correct certain information in a patent application. According to MPEP 603, deficiencies or inaccuracies due to the failure to meet the requirements of 37 CFR 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with 37 CFR 1.76.

For example, an error in an inventor’s mailing address may be corrected with an application data sheet in accordance with 37 CFR 1.76.

However, it’s important to note that not all corrections can be made with an ADS. Specifically, any correction of inventorship must be pursuant to 37 CFR 1.48. This means that inventorship changes require a separate process and cannot be corrected solely through an ADS.

To learn more:

• application data sheet
• ADS
• correction
• patent application
• inventor information

Can an application data sheet (ADS) be used to name the inventors in a patent application filed before September 16, 2012?

Yes, an application data sheet (ADS) can be used to name the inventors in a patent application filed before September 16, 2012. However, it’s important to note that the ADS is not the only way to name inventors, and there are specific rules governing this process.

According to MPEP 601.05(b):

“37 CFR 1.76(b)(1) states that the application data sheet must include the name, residence, and mailing address of each person believed to be an actual inventor. For nonprovisional applications filed before September 16, 2012, the naming of the inventorship is governed by 37 CFR 1.41(a)(1) in effect as of September 15, 2012.”

This means that while an ADS can be used to name inventors, the inventorship is ultimately determined by the rules set forth in 37 CFR 1.41(a)(1). It’s crucial to ensure that the inventor information provided in the ADS is consistent with other application documents, particularly the oath or declaration.

If there are any discrepancies, the oath or declaration will generally take precedence over the ADS for naming inventors in applications filed before September 16, 2012.

To learn more:

• ADS
• application data sheet
• naming inventors
• patent application

Yes, an Application Data Sheet (ADS) can be used to correct or update inventor information. The MPEP 601.05(a) states:

A corrected ADS may be submitted to correct or update information other than the inventorship. A corrected ADS correcting or updating information other than inventorship which is also reflected in the oath or declaration under 37 CFR 1.63 filed in a pending application must be accompanied by a request to correct or update the information under 37 CFR 1.48(c).

To correct inventorship, a request under 37 CFR 1.48(a) is required along with the corrected ADS. It’s important to follow the proper procedures to ensure the changes are accepted by the USPTO.

To learn more:

• Application Data Sheet
• ADS
• Inventor Information
• Patent Application

For applications filed before September 16, 2012 (pre-AIA applications), the Application Data Sheet (ADS) cannot be used to claim small entity status. According to MPEP 601.05(b):

The ADS cannot be used to make a small entity assertion, which must be done in a separate paper.

To claim small entity status in pre-AIA applications, applicants must submit a separate written assertion of entitlement to small entity status. This can be done through:

• A specific written assertion of entitlement to small entity status
• Payment of the small entity basic filing fee
• Submission of a small entity written assertion in a related application

It’s important to note that for applications filed on or after September 16, 2012, the rules regarding small entity status claims have changed, and the ADS can be used for this purpose in those later applications.

To learn more:

• ADS
• Small Entity Status
• Pre-AIA
• Patent Application

Yes, an Application Data Sheet (ADS) can be used to correct or update information in patent applications filed before September 16, 2012, but there are specific rules and timeframes to consider:

• An ADS can be used to correct or update bibliographic data, especially if submitted within one month of the filing date.
• After the one-month period, corrections may require additional documentation or fees.

According to MPEP 601.05(b): “If an application data sheet is submitted in a patent application under 37 CFR 1.53(b), the application data sheet will be treated as part of the application and will be used to capture the bibliographic data from the application data sheet. Bibliographic data contained in an application data sheet will govern when inconsistent with information provided by another document (e.g., the application transmittal letter).”

This means that the ADS takes precedence over other documents when it comes to bibliographic information. However, for significant changes after the initial filing, applicants may need to submit additional forms or follow specific procedures outlined by the USPTO.

To learn more:

• Application Data Sheet
• ADS
• Bibliographic Data
• Corrections
• Updates

Yes, an Application Data Sheet (ADS) can be used to correct or update information in a patent application. The MPEP 601.05 states:

‘An ADS may be submitted after the initial filing of the application to correct or update information in a previously submitted application data sheet, or in an oath or declaration under 37 CFR 1.63 or 1.67, except that inventorship changes are governed by 37 CFR 1.48, correspondence address changes are governed by 37 CFR 1.33(a), and citizenship changes are governed by 37 CFR 1.63 or 1.67.’

However, it’s important to note that:

• Some changes, such as inventorship, correspondence address, and citizenship, are governed by specific regulations and may require additional procedures.
• When submitting a corrected or updated ADS, applicants should clearly identify the information being changed relative to the most recent filing or ADS.
• For applications filed on or after September 16, 2012, any changes to the ADS must be made in accordance with 37 CFR 1.76(c).

To learn more:

• ADS
• correction
• update
• patent application

Yes, in certain circumstances, alternative forms can be used instead of an Application Data Sheet (ADS) to provide some of the required information:

• Patent Law Treaty Model International Forms can be used for certain information.
• The Patent Cooperation Treaty Request Form can be used in some cases for national stage applications.

37 CFR 1.76(f) states: “The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form.”

However, it’s important to note that if an ADS is also submitted, the information in the ADS will generally govern when inconsistent with these alternative forms. Additionally, an ADS is still required in certain situations, such as when postponing submission of the inventor’s oath or declaration.

To learn more:

• ADS
• Application Data Sheet
• Patent Law Treaty
• Patent Cooperation Treaty
• alternative forms

Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?

Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:

• The practitioner must submit a request to withdraw.
• The request must comply with 37 CFR 1.36.
• The USPTO must approve the withdrawal.

According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”

It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.

To learn more:

• patent practitioner
• withdrawal
• Application Data Sheet
• ADS

Yes, the procedures for correcting inventorship and correcting an inventor’s name are the same. According to MPEP 602.01(c)(2):

The procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors are not distinct.

Both procedures require:

• Submitting an application data sheet (ADS) in accordance with 37 CFR 1.76 that identifies each inventor by their legal name in the desired order.
• Paying the processing fee set forth in 37 CFR 1.17(i).

This unified procedure simplifies the process for applicants when making changes related to inventorship or inventor names in patent applications.

To learn more:

• inventorship correction
• inventor name correction
• patent application
• ADS
• application data sheet

An Application Data Sheet (ADS) for patent applications filed before September 16, 2012, can include various types of bibliographic information. According to MPEP 601.05(b), the following information can be included:

• Applicant information
• Correspondence address
• Application information (e.g., title, docket number, secrecy order indicator)
• Representative information
• Domestic benefit information
• Foreign priority information
• Assignee information

The MPEP states: “The application data sheet may be submitted subsequent to the filing of the application, within the time period set forth in 37 CFR 1.53(f), to provide the bibliographic data.”

It’s important to note that while an ADS can include this information, some details may still need to be provided or confirmed in other application documents, depending on the specific circumstances of the application.

To learn more:

• Application Data Sheet
• ADS
• Bibliographic Information
• Patent Application

The Application Data Sheet (ADS) plays a crucial role in establishing priority and benefit claims in patent applications:

• Providing domestic benefit information in the ADS constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and 37 CFR 1.78.
• Providing foreign priority information in the ADS constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.
• The most recent ADS will govern with respect to foreign priority or domestic benefit claims in case of inconsistencies.

37 CFR 1.76(b)(5) states: “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78.”

Similarly, 37 CFR 1.76(b)(6) states: “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.”

It’s crucial to ensure that priority and benefit claims are accurately listed in the ADS to properly establish these claims in the patent application.

To learn more:

• ADS
• Application Data Sheet
• priority claims
• benefit claims
• patent application

What is the significance of the Application Data Sheet (ADS) in correcting or adding a benefit claim?

The Application Data Sheet (ADS) plays a crucial role in correcting or adding a benefit claim after filing. According to MPEP 211.02(a):

A corrected ADS (along with a petition under 37 CFR 1.78 and the petition fee) is required to correct a benefit claim if the benefit claim was not included on the original ADS.

This means that if you need to correct or add a benefit claim that wasn’t included in the original ADS, you must submit:

• A corrected ADS
• A petition under 37 CFR 1.78
• The required petition fee

The corrected ADS should contain all of the information from the original ADS, with the changes to the benefit claim marked in accordance with 37 CFR 1.76(c).

To learn more:

• ADS
• benefit claim
• patent application
• correction
• petition

An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:

• They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
• They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.

The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.

To learn more:

• obligated assignee
• patent application
• inventor rights
• ADS

An Application Data Sheet (ADS) in patent applications filed before September 16, 2012 serves several important purposes:

• It provides bibliographic data to be used for capturing and processing application information.
• It allows applicants to submit certain information without an oath or declaration or application transmittal letter.
• It may be used to provide or correct bibliographic data, particularly if submitted within one month of the filing date.

According to MPEP 601.05(b): “An application data sheet is a sheet or set of sheets containing bibliographic data, which is arranged in a format specified by the Office. When an application data sheet is provided in a patent application, the application data sheet becomes part of the application.”

To learn more:

• Application Data Sheet
• ADS
• Patent Application
• Bibliographic Data

An Application Data Sheet (ADS) serves as a crucial document in patent applications filed on or after September 16, 2012. Its primary purposes are:

• To provide bibliographic data for the application
• To facilitate efficient processing and examination of the application
• To ensure accurate capture of important information by the Office of Patent Application Processing (OPAP)

According to MPEP 601.05(a), “An application data sheet is a sheet or sheets that may be submitted in a provisional application (except as provided in 37 CFR 1.53(c)(1) ), a nonprovisional application, or a national stage application.” The ADS helps streamline the application process and reduces errors in the handling of patent applications.

To learn more:

• ADS
• Application Data Sheet
• patent application
• bibliographic data

Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP § 211.04:

Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.

In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:

• A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.

It’s important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.

To learn more:

• benefit claim
• petition
• ADS
• RCE
• reissue application
• certificate of correction

An Application Data Sheet (ADS) is a voluntary submission for patent applications filed before September 16, 2012, that contains bibliographic data arranged in a specific format. According to MPEP 601.05(b), “An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office.” The ADS becomes part of the application and must be titled “Application Data Sheet.”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application
• Bibliographic Data

An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:

‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’

The ADS must include:

• The name of the inventor(s)
• A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
• If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention

The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.

To learn more:

• Application Data Sheet
• ADS
• assignee-filed application
• patent procedure

An Application Data Sheet (ADS) is a document containing bibliographic data for a patent application, arranged in a format specified by the USPTO. According to MPEP 601.05, an ADS:

• May be submitted voluntarily in provisional or nonprovisional applications
• Must be submitted when required by 37 CFR 1.55 and 1.78 to claim priority to or benefit of a prior-filed application
• Must be titled “Application Data Sheet”
• Becomes part of the application when provided

The USPTO prefers the use of an ADS in all applications to help facilitate electronic capturing of important data.

To learn more:

• ADS
• Application Data Sheet
• Patent Application
• Bibliographic Data
• USPTO

To learn more:

• priority claim
• benefit claim

An Application Data Sheet (ADS) is a document that provides bibliographic data for patent applications. Its use and importance are described in the MPEP:

“If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application with one exception for applications filed before September 16, 2012.”

Key points about the ADS include:

• It simplifies the filing process by consolidating important information in one place.
• Information in the ADS generally takes precedence over conflicting information elsewhere in the application.
• For applications filed before September 16, 2012, citizenship of inventors must still be provided in the oath or declaration, even if included in the ADS.
• The ADS controls most information except for the naming of inventors, which is governed by 37 CFR 1.41.

For more detailed information on the Application Data Sheet, refer to MPEP § 601.05.

To learn more:

• Application Data Sheet
• ADS
• patent application
• bibliographic data
• inventor information

For applications filed before September 16, 2012, the Application Data Sheet (ADS) should include the following information:

• Applicant information
• Correspondence address
• Application information
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b): The ADS must include all of the section headings listed in 37 CFR 1.76(b), even if no information is being provided for some of the sections. This ensures consistency and completeness in the application filing process.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Patent Application

An Application Data Sheet (ADS) for a patent application filed on or after September 16, 2012, should include specific bibliographic data. According to MPEP 601.05(a), the ADS must contain the following information:

• Inventor information: Full name, residence, and mailing address of each inventor
• Applicant information: Name and address of the applicant (if different from the inventor)
• Correspondence address
• Application information: Title of the invention, attorney docket number, type of application
• Representative information: Registration number and name of each practitioner
• Domestic benefit/national stage information: Prior-filed application number and filing date
• Foreign priority information: Foreign application number, country, and filing date
• Assignee information: Name and address of the assignee of the entire right, title, and interest

The MPEP states: “An application data sheet must be labeled ‘Application Data Sheet’ and should provide the bibliographic data, in the order and with the headings specified in this section, to be entitled to the benefits provided by the application data sheet.” Ensuring all required information is accurately provided in the ADS is crucial for proper processing of the application and establishing priority claims.

To learn more:

• ADS
• Application Data Sheet
• patent application
• bibliographic data

When claiming foreign priority, the application data sheet (ADS) must include specific information to meet the requirements of 37 CFR 1.55(i)(2). The MPEP states that the claim for priority must be presented in an ADS:

identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application

This information is crucial for the USPTO to retrieve the priority document through the Priority Document Exchange program. Ensure that all details are accurate to avoid any issues with your priority claim.

To learn more:

• Application Data Sheet
• ADS
• Foreign Priority Claim
• Priority Document Exchange

What information is required on the Application Data Sheet (ADS) regarding inventors?

The Application Data Sheet (ADS) is a crucial document in patent applications, and it must include specific information about the inventors. According to MPEP 602.08(a), the following information is required for each inventor:

• Legal name
• Residence (city and state or country)
• Mailing address
• Citizenship

The MPEP states:

“The inventor’s legal name for the ADS should be the name as it appears on a legal document such as a birth certificate, marriage certificate, court order, etc.”

It’s important to provide accurate and complete information on the ADS to avoid potential issues with the patent application process. Any changes to inventor information after filing may require submitting a corrected ADS.

To learn more:

• Application Data Sheet
• ADS
• inventor information
• patent application

An Application Data Sheet (ADS) for pre-AIA applications includes several categories of bibliographic information:

• Applicant information (name, residence, mailing address, and citizenship)
• Correspondence information
• Application information (title, classification, drawings, etc.)
• Representative information
• Domestic priority information
• Foreign priority information
• Assignee information

As stated in MPEP 601.05(b), “Bibliographic data as used in paragraph (a) of this section includes: (1) Applicant information… (2) Correspondence information… (3) Application information… (4) Representative information… (5) Domestic priority information… (6) Foreign priority information… (7) Assignee information…”

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Bibliographic Data
• Patent Application Information

What happens if there’s an error in the foreign priority application number?

If there’s an error in the foreign priority application number, it can lead to serious consequences for the priority claim. The MPEP emphasizes the importance of accuracy:

“Errors in foreign priority claims may jeopardize the applicant’s priority claim.” (MPEP 214.04)

Consequences of errors may include:

• Rejection of the priority claim
• Loss of priority date
• Potential issues with patentability if prior art emerges in the intervening period

If an error is discovered, it’s crucial to promptly file a corrected Application Data Sheet (ADS) or a petition to correct the priority claim, depending on the timing and nature of the error. Always double-check the application number against the original foreign priority document to ensure accuracy.

To learn more:

• foreign priority
• error correction
• priority claim
• ADS

When there are inconsistencies between the Application Data Sheet (ADS) and other documents, the ADS generally takes precedence. According to MPEP 601.05(a):

Information in the Application Data Sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration.

However, it’s important to note that this only applies when the inconsistent information is supplied at the same time. If the inconsistency arises later, a corrected ADS may be required to update the information.

To learn more:

• Application Data Sheet
• ADS
• Inconsistencies
• Patent Application

What happens if there are inconsistencies between an ADS and other documents?

When inconsistencies exist between an Application Data Sheet (ADS) and other documents, the ADS generally takes precedence. According to MPEP 601.05:

“If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.”

However, there are exceptions to this rule:

• For inventorship, the most recent submission will control.
• For foreign priority and domestic benefit claims, the most recent submission will control, provided it was timely filed.

It’s crucial to ensure all information in the ADS is accurate to avoid potential issues later in the application process.

To learn more:

• ADS
• inconsistencies
• document precedence
• inventorship
• priority claims

When inconsistencies exist between an Application Data Sheet (ADS) and other documents in a patent application, the ADS generally takes precedence. According to MPEP 601.05:

‘Where an ADS is used, the ADS data will govern when inconsistent with the information provided elsewhere in the application, except when the ADS is accompanied by a clear indication that the information in the ADS is not to be used.’

However, it’s important to note that if there’s a clear indication that the information in the ADS should not be used, then other documents may take precedence. Applicants should strive for consistency across all application documents to avoid confusion and potential issues during examination.

To learn more:

• ADS
• inconsistencies
• application documents
• precedence

If you submit an Application Data Sheet (ADS) after the filing date of your patent application, it is considered a supplemental ADS. According to MPEP 601.05(a):

A supplemental ADS that is filed after the initial filing date of the application is not part of the original application papers, but is the paper that will be used to correct the bibliographic information in the Office’s records.

This means that while the supplemental ADS can be used to update or correct information, it doesn’t become part of the original application. Any changes made through a supplemental ADS may require additional fees or actions, such as a petition under 37 CFR 1.78 for late claims of priority.

To learn more:

• Application Data Sheet
• ADS
• Supplemental ADS
• Patent Application
• Filing Date

What happens if I fail to underline the entire benefit claim in a corrected ADS?

Failing to properly underline the entire benefit claim in a corrected Application Data Sheet (ADS) can have serious consequences. The MPEP 211.02(a) states:

If the corrected ADS fails to identify the benefit claim with underlining of all text inserted, the Office of Patent Application Processing (OPAP) will not recognize such benefit claim and will not enter such benefit claim information in Office records.

This means that if you don’t underline the entire benefit claim:

• The USPTO won’t recognize the benefit claim
• The benefit claim information won’t be entered into official records
• Your application may lose its priority date

To avoid these issues, always ensure that you underline the entire benefit claim when adding it to a corrected ADS, even if parts of the claim were present in the original ADS.

To learn more:

• ADS
• benefit claim
• underlining
• correction
• patent application

What happens if an application data sheet (ADS) is not consistent with the information provided elsewhere in the application?

If there are inconsistencies between the ADS and other documents in the application, the ADS will generally control, except for the following situations:

• The ADS is inconsistent with the oath or declaration accompanying the application, and the oath or declaration is accompanied by a statement explaining the inconsistency. In this case, the oath or declaration will control.
• The ADS is inconsistent with information provided in the specification, in which case the information in the specification will control.

As stated in MPEP 601.05(b):

“If an ADS is inconsistent with the information provided elsewhere in the application, the ADS will control except for: (1) the naming of the inventors (37 CFR 1.41(a)(1) governs), and (2) the information that is contained in an oath or declaration accompanying the application (37 CFR 1.63 and 1.67 govern).”

It’s crucial to ensure consistency across all application documents to avoid potential confusion or delays in the examination process.

To learn more:

• ADS
• application data sheet
• inconsistencies
• patent application

To correct or update an inventor’s name in a patent application (other than reissue applications), you can use Form PTO/AIA/40. As stated in MPEP 602.01(c)(2):

See MPEP § 602.01(c)(1) for a copy of form PTO/AIA/40 that may be used to correct or update in inventor’s name or change the order of names in applications (other than reissue applications).

This form should be submitted along with:

• An application data sheet (ADS) in accordance with 37 CFR 1.76 that identifies each inventor by their legal name in the desired order.
• The processing fee set forth in 37 CFR 1.17(i).

Remember to clearly identify the desired inventor name change in your request.

To learn more:

• Form PTO/AIA/40
• inventor name correction
• patent application
• ADS
• application data sheet

What documentation is required for inventorship correction in a patent application?

The documentation required for inventorship correction in a patent application includes:

• A request to correct inventorship under 37 CFR 1.48(a)
• An application data sheet (ADS) with the correct inventorship information
• A statement of facts from the new inventor(s) if being added
• Written consent from any assignees

The MPEP states: The inventorship of an application may be corrected by filing a request under 37 CFR 1.48(a). The request must include: (1) An application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name, and (2) the processing fee set forth in 37 CFR 1.17(i). Additionally, When an inventor is being added, applicant must submit a statement from each person being added as an inventor that the inventorship error occurred without deceptive intention on his or her part. It’s important to note that while these are the basic requirements, additional documentation may be necessary depending on the specific circumstances of the correction.

To learn more:

• inventorship correction
• documentation
• patent application
• ADS

The signature requirements for an Application Data Sheet (ADS) are as follows:

• An ADS must be signed in compliance with 37 CFR 1.33(b).
• An unsigned ADS will be treated only as a transmittal letter.
• Proper signing is crucial for the ADS to be effective in providing application information.

37 CFR 1.76(e) states: “An application data sheet must be signed in compliance with § 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.”

It’s important to note that an unsigned ADS will not be effective for providing crucial information such as inventor names, applicant details, or priority claims. Therefore, ensuring proper signature on the ADS is essential for it to serve its intended purpose in the patent application process.

To learn more:

• ADS
• Application Data Sheet
• signature requirements
• patent application

For pre-AIA applications, submitting a supplemental Application Data Sheet (ADS) must follow specific requirements:

1. Timing: MPEP 601.05(b) states, “Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under pre-AIA 37 CFR 1.63 or 1.67.”

2. Title: The supplemental ADS must be titled “Supplemental Application Data Sheet.”

3. Content: It must contain all section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading.

4. Format: The supplemental ADS must indicate changes, “preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets.”

5. Signature: The supplemental ADS must be signed as it is considered a paper filed in the application.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Supplemental ADS
• Patent Application

To correct inventorship in a nonprovisional patent application filed on or after September 16, 2012, the following requirements must be met:

• Submit a request to correct or change the inventorship
• Include a signed application data sheet (ADS) that:
  • Identifies each inventor by their legal name
  • Provides the residence and mailing address of each inventor
  • Shows changes with underlining for insertions and strike-through or brackets for deletions
• Pay the processing fee set forth in 37 CFR 1.17(i)

As stated in the MPEP: A request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1)) and the processing fee set forth in 37 CFR 1.17(i).

To learn more:

• inventorship correction
• nonprovisional application
• ADS
• processing fee

Providing incorrect information in an Application Data Sheet (ADS) can have serious consequences for your patent application. The MPEP 601.05(a) emphasizes the importance of accuracy:

Applicants should submit a new ADS whenever the previously submitted information is no longer accurate. Submission of an inaccurate ADS may delay processing of the application and may require the applicant to file a petition under 37 CFR 1.78 to correct the applicant information.

Consequences of incorrect ADS information may include:

• Delays in application processing
• Potential loss of priority claims
• Incorrect inventorship records
• Need for additional petitions and fees to correct errors
• Possible issues with patent enforcement if errors are not corrected

It’s crucial to review your ADS carefully before submission and promptly correct any errors discovered using a supplemental ADS or other appropriate means.

To learn more:

• Application Data Sheet
• ADS
• Incorrect Information
• Patent Application
• Consequences

While submitting an Application Data Sheet (ADS) is not mandatory for all applications, there can be consequences for not including one. According to MPEP 601.05(a):

If an application is filed without an application data sheet, the applicant will not have the benefit of:

• The filing date of any provisional application;
• The filing date of any non-provisional application;
• The filing date of any international application;
• The 35 U.S.C. 119, 120, 121, 365(c), or 386(c) priority claim; and
• The foreign priority claim.

These benefits can be crucial for establishing priority dates and protecting your invention. Without an ADS, you may need to submit additional paperwork later to claim these benefits, which could potentially lead to delays or complications in the application process.

To learn more:

• Application Data Sheet
• ADS
• Patent Application
• Priority Claims

What are the consequences of not submitting an Application Data Sheet (ADS) in applications filed before September 16, 2012?

For applications filed before September 16, 2012, submitting an Application Data Sheet (ADS) was not mandatory. The MPEP 601.05(b) states:

In applications filed before September 16, 2012, the application data sheet is not a requirement of 37 CFR 1.51(b) for a complete application, but is rather supplemental to the application and is used to capture bibliographic information.

However, not submitting an ADS could lead to the following consequences:

• Manual data entry: The USPTO would have to manually enter bibliographic information from other application papers, which could potentially lead to errors.
• Delayed processing: Without an ADS, the application processing might take longer as the information needs to be gathered from various sources.
• Potential for inconsistencies: Information scattered across different documents might lead to inconsistencies in the application record.
• Missed benefits: Certain benefits, such as easily claiming domestic benefit or foreign priority, might be harder to establish without an ADS.

While not submitting an ADS wouldn’t result in an incomplete application, it was generally recommended to include one for smoother processing and to ensure accurate capture of bibliographic information.

To learn more:

• Application Data Sheet
• ADS
• pre-AIA
• patent application
• bibliographic information

What are the consequences of inconsistencies between an ADS and other documents in a patent application?

Inconsistencies between an Application Data Sheet (ADS) and other documents in a patent application can lead to processing delays and potential issues. The MPEP states:

“If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.” (MPEP 601.05(a))

This means:

• The ADS takes precedence over other documents for bibliographic data.
• Inconsistencies may require corrections, potentially delaying application processing.
• Applicants should ensure all documents are consistent to avoid complications.

It’s crucial to review all application documents carefully before submission to maintain consistency and avoid potential issues in the patent examination process.

To learn more:

• ADS
• Application Data Sheet
• inconsistencies
• patent application
• bibliographic data

How should the foreign priority application number be formatted in an ADS?

When entering the foreign priority application number in an Application Data Sheet (ADS), it’s crucial to follow the proper format to ensure accurate identification. The MPEP states:

“The foreign application number should be identified in an application data sheet (ADS), rather than in a separate paper.” (MPEP 214.04)

The ADS should include:

• The correct application number
• The country or intellectual property authority where the application was filed
• The filing date of the priority application

It’s important to use the exact format as it appears on the foreign priority document to avoid any discrepancies or potential issues with the priority claim.

To learn more:

• foreign priority
• ADS
• application data sheet
• priority claim

The proper submission of a benefit claim depends on the filing date of the application:

• For applications filed on or after September 16, 2012: The benefit claim must be included in an Application Data Sheet (ADS) in compliance with 37 CFR 1.76.
• For applications filed before September 16, 2012: The benefit claim can be submitted either by an amendment to the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76.

The MPEP states: Applicant must still submit the benefit claim in the manner specified in 37 CFR 1.78 (i.e., in an ADS in compliance with 37 CFR 1.76 (or for applications filed prior to September 16, 2012 by an amendment to the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit of a prior application.

To learn more:

• benefit claim
• Application Data Sheet
• ADS
• specification amendment
• 37 CFR 1.76

To learn more:

• 37 CFR 1.76

The requirement for specific reference to prior applications has undergone changes due to recent legislation:

1. For applications filed before September 16, 2012: The specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.
2. For applications filed on or after September 16, 2012: The specific reference to the prior application must be in the application data sheet (ADS).

As stated in the MPEP: Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification. (MPEP 210)

This change was implemented as part of the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act, which became effective on September 16, 2012. The Office revised 37 CFR 1.78 to reflect these changes.

For more information on ADS, visit: ADS.

For more information on application data sheet, visit: application data sheet.

For more information on prior applications, visit: prior applications.

For more information on specific reference, visit: specific reference.

The USPTO handles unintentionally delayed domestic benefit claims similarly to foreign priority claims, but with some specific provisions. According to MPEP 214.02:

‘For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (37 CFR 1.76). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.’

For domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c), a petition to accept an unintentionally delayed claim must include:

• The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application, unless previously submitted;
• The petition fee set forth in 37 CFR 1.17(m); and
• A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the benefit claim was filed was unintentional.

The Director may require additional information where there is a question whether the delay was unintentional.

To learn more:

• unintentionally delayed domestic benefit claim
• petition requirements
• ADS
• petition fee
• unintentional delay statement

The USPTO has specific rules for handling inconsistent information between an Application Data Sheet (ADS) and other documents:

1. Generally, the most recent submission will govern.
2. For foreign priority or domestic benefit claims, the most recent ADS will govern.
3. Inventorship and inventor names are governed by 37 CFR 1.41 and 1.48.
4. When submitted simultaneously, the ADS will govern over other documents.

37 CFR 1.76(d)(1) states: “The most recent submission will govern with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that: (i) The most recent application data sheet will govern with respect to foreign priority (§ 1.55) or domestic benefit (§ 1.78) claims; and (ii) The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48.”

If inconsistencies are found, applicants should submit a corrected ADS to ensure accurate information is captured by the Office.

To learn more:

• ADS
• Application Data Sheet
• inconsistent information
• USPTO
• patent application

The USPTO has specific rules for handling inconsistencies between the Application Data Sheet (ADS) and other documents, as outlined in MPEP 601.05:

1. The most recent submission generally governs for inconsistencies between an ADS and other documents.
2. For foreign priority or domestic benefit claims, the most recent ADS governs.
3. For inventorship and inventor names, 37 CFR 1.41 and 1.48 govern.
4. When inconsistent information is supplied simultaneously, the ADS will control over a designation of correspondence address or the inventor’s oath or declaration.
5. The Office captures bibliographic information from the ADS and generally does not check it against other documents.

If you need to correct inconsistencies, submit a corrected ADS as described in 37 CFR 1.76(c)(1). Note that certain changes, such as inventorship, may require specific forms or petitions in addition to a corrected ADS.

To learn more:

• ADS
• Application Data Sheet
• Inconsistencies
• USPTO Procedures
• Patent Application

For applications filed before September 16, 2012 (pre-AIA applications), the USPTO has specific guidelines for handling inconsistencies between the Application Data Sheet (ADS) and other documents. According to MPEP 601.05(b):

If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control.

However, there are exceptions to this rule:

• Inventorship: The ADS does not control if it’s inconsistent with the inventorship set forth in an executed oath or declaration.
• Correspondence address: A clear direction to use a different address will override the ADS.
• Small entity status: Any small entity assertion or claim will control over the ADS.

It’s crucial for applicants to ensure consistency across all application documents to avoid potential issues during the examination process.

To learn more:

• ADS
• Inconsistencies
• Pre-AIA
• Patent Application

The Application Data Sheet (ADS) plays an important role in establishing and changing inventorship in patent applications:

• The ADS should include inventor information, including legal name, residence, and mailing address of each inventor.
• The naming of inventorship is governed by 37 CFR 1.41.
• Changes to inventorship or the names of inventors are governed by 37 CFR 1.48.
• In case of inconsistencies, the most recent submission will generally govern, except for inventorship issues.

37 CFR 1.76(d)(1) states: “The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48.”

It’s important to note that while the ADS is used to provide inventor information, any changes to inventorship must comply with the specific requirements of 37 CFR 1.48, which may require additional documentation beyond just updating the ADS.

To learn more:

• ADS
• Application Data Sheet
• inventorship
• patent application
• inventor information

For pre-AIA applications, the Application Data Sheet (ADS) plays a crucial role in establishing priority claims:

1. For domestic priority: MPEP 601.05(b) states, “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120.” This means that including domestic priority information in the ADS satisfies the requirement for a specific reference to earlier filed applications.

2. For foreign priority: The MPEP notes, “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.”

In both cases, including priority information in the ADS eliminates the need to make these claims elsewhere in the application, such as in the specification.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Priority Claims
• Domestic Priority
• Foreign Priority

The Application Data Sheet (ADS) plays a crucial role in naming inventors for patent applications filed on or after September 16, 2012. According to MPEP 601.05(a):

“The naming of the inventors in the application data sheet is the naming of the actual inventors of the subject matter of the application. The inventorship determined from the application data sheet will be used as the inventorship on the patent if the application is granted as a patent.”

This means that the ADS serves as the official document for declaring inventorship. It’s important to note that:

• The ADS replaces the need for a separate inventor’s oath or declaration for naming inventors
• Any changes to inventorship after filing must be done through a proper request under 37 CFR 1.48
• Accuracy in naming inventors is crucial, as incorrect inventorship can affect the validity of the patent

Applicants should ensure that the inventorship information in the ADS is complete and accurate at the time of filing to avoid potential complications later in the patent process.

To learn more:

• ADS
• Application Data Sheet
• inventorship
• patent application

In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly impact the priority claim process. The ADS can be used to:

• Provide domestic benefit information
• Include foreign priority information
• Correct or update priority claims within certain timeframes

According to MPEP 601.05(b): “For applications filed before September 16, 2012, an application data sheet may be used to provide or correct benefit claim information, such as cross-references to one or more prior-filed applications… The benefit claim must be set forth in the ADS in order to be considered properly submitted.”

It’s crucial to note that while the ADS can be used to submit priority information, applicants must still comply with other statutory requirements and deadlines for claiming priority. The ADS provides a centralized location for this information, potentially simplifying the application process and reducing errors in priority claims.

To learn more:

• Application Data Sheet
• ADS
• Priority Claim
• Domestic Benefit
• Foreign Priority

In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly affect the oath or declaration requirements. Specifically:

• An ADS can eliminate the need for certain information in the oath or declaration.
• It allows for the submission of some bibliographic data without an oath or declaration.

The MPEP 601.05(b) states: “If an application data sheet is used in an application filed before September 16, 2012 (in compliance with pre-AIA 37 CFR 1.76) to supply or change the information in 37 CFR 1.63(c), and the oath or declaration under 37 CFR 1.63 refers to the application data sheet, the oath or declaration does not need to be supplemented to include the information supplied in the application data sheet.”

This means that if the oath or declaration references the ADS, it doesn’t need to be updated with information already provided in the ADS, streamlining the application process.

To learn more:

• Application Data Sheet
• ADS
• Oath
• Declaration
• Patent Application

When filing a patent application, you must specify a correspondence address in one of two ways:

• In an application data sheet (ADS) under 37 CFR 1.76, or
• Elsewhere in the application papers in a clearly identifiable manner

As stated in 37 CFR 1.33(a): When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing.

This address will be used by the USPTO to send all official communications regarding your application.

To learn more:

• correspondence address
• patent application
• ADS
• application data sheet

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?

When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):

The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).

To properly mark changes in a corrected ADS:

• Insertions: Underline new text
• Deletions: Use strike-through or brackets for removed text
• Existing information: Include all information from the original ADS, even if unchanged

It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.

To learn more:

• ADS
• benefit claim
• correction
• marking changes
• patent application

To correct or update information in an Application Data Sheet (ADS), follow these guidelines from MPEP 601.05:

1. Submit a new ADS titled “Supplemental Application Data Sheet”
2. Include all sections listed in 37 CFR 1.76(b), even if some sections have no changed data
3. Identify changes with underlining for insertions and strike-through or brackets for text removed
4. Make changes relative to the most recent filing receipt
5. Submit the corrected ADS until payment of the issue fee

Note that certain changes, such as inventorship changes, foreign priority and domestic benefit information changes, and correspondence address changes, must comply with specific rules and may require additional forms or petitions.

The USPTO recommends using the corrected Web-based ADS when possible, as it pre-populates with information of record and automatically formats changes.

To learn more:

• ADS
• Application Data Sheet
• Corrections
• Updates
• Patent Application

To correct or add a benefit claim after filing your application, you need to follow specific procedures depending on the timing and circumstances:

1. If you received a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant this request if the proper reference to the prior application was included in the original filing or within the time period required by 37 CFR 1.78.
2. If you’re adding a benefit claim after the time period required by 37 CFR 1.78, you must file a petition and pay the petition fee. The petition must be accompanied by a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or a supplemental ADS for applications filed before that date.

As stated in MPEP 211.02(a): If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required.

Depending on the status of your application, you may also need to file:

• A Request for Continued Examination (RCE) if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction if the application has already issued as a patent.

It’s important to note that you cannot add an incorporation by reference statement to a benefit claim after the filing date, as this would be considered new matter.

For more information on ADS, visit: ADS.

For more information on RCE, visit: RCE.

To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:

• For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.

The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. (MPEP § 211)

For more information on ADS, visit: ADS.

For more information on prior-filed application, visit: prior-filed application.

For more information on specific reference, visit: specific reference.

For patent applications filed on or after September 16, 2012, joint inventors have more flexibility in executing oaths or declarations. The MPEP states: “For applications filed on or after September 16, 2012, joint inventors may execute separate oaths or declarations in which only the person executing the oath or declaration is identified if an ADS is filed that provides the required inventor information.” This means each inventor can submit their own oath or declaration, naming only themselves, as long as a complete Application Data Sheet (ADS) is filed with all inventor information. However, if such an ADS is not filed, then each oath or declaration must name all of the inventors, as per 37 CFR 1.63(a) and (b).

To learn more:

• Joint Inventors
• Oath
• Declaration
• Application Data Sheet
• ADS

The process for deleting a benefit claim depends on when your application was filed:

• For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
• For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.

However, be aware of the following considerations:

• The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
• If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
• If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
• Deleting a benefit claim may affect the publication date of the application.

The MPEP also notes an important caveat:

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.

This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.

To learn more:

• delete benefit claim
• ADS
• patent application
• amendment
• specification

To correct inventorship in a nonprovisional patent application, you need to submit a request under 37 CFR 1.48(a). The request should include:

• A signed application data sheet (ADS) with the correct inventorship information
• The processing fee set forth in 37 CFR 1.17(i)

As stated in the MPEP, The application data sheet submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.

To learn more:

• inventorship correction
• nonprovisional application
• ADS
• processing fee

How can I correct a timely submitted benefit claim with errors?

If you’ve submitted a benefit claim within the required time period but it contains errors, you can correct it without filing a petition. According to MPEP 211.02(a):

“A petition under 37 CFR 1.78 and the petition fee would not be required for correcting a timely submitted benefit claim for the following situations: (1) Changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”); (2) Changing the filing date of a prior-filed nonprovisional or provisional application; and (3) Changing a benefit claim of a prior-filed provisional application under 35 U.S.C. 120 (e.g., “This application is a continuation of prior-filed provisional application No. —“) to a benefit claim of the same provisional application under 35 U.S.C. 119(e) (e.g., “This application claims the benefit of prior-filed provisional application No. —“) during the pendency of the later-filed application.”

To make these corrections, you should submit a corrected application data sheet (ADS) with the proper markings to show the changes.

To learn more:

• benefit claim
• correction
• application data sheet
• ADS

If you receive a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant such a request if the proper reference to the prior application is included:

• For applications filed on or after September 16, 2012: in an Application Data Sheet (ADS)
• For applications filed prior to September 16, 2012: in the first sentence(s) of the specification or an ADS

This reference must be made within the time period required by 37 CFR 1.78, with a few exceptions. As stated in the MPEP:

The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office.

It’s crucial to review your filing receipt promptly and carefully to avoid the need for a petition and associated fees.

To learn more:

• filing receipt
• benefit claim
• ADS
• patent application
• correction

For pre-AIA applications, the resolution of inconsistencies between the Application Data Sheet (ADS) and other documents is governed by specific rules:

1. General rule: MPEP 601.05(b) states, “The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67, except as provided by pre-AIA 37 CFR 1.76(d)(3).”

2. Exception for inventor information: “The oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship.”

3. Correction process: If inconsistencies exist, a supplemental ADS should be submitted to conform the information with the correct data in other documents.

To learn more:

• ADS
• Application Data Sheet
• Pre-AIA
• Inconsistencies
• Inventor Information

Yes, some deficiencies or inaccuracies in an inventor’s oath or declaration can be corrected using an Application Data Sheet (ADS). The MPEP states: “Some deficiencies or inaccuracies can be corrected with an application data sheet (ADS) in accordance with 37 CFR 1.76.” For more detailed information on using an ADS, the MPEP refers to MPEP § 601.05.

To learn more:

• Application Data Sheet
• ADS
• Inventor’s Oath
• Declaration
• Correction

Yes, the USPTO allows the use of certain alternative forms for submitting application data, as described in MPEP 601.05:

1. Patent Law Treaty Model International Forms can be used to present priority or benefit claims, references to previously filed applications, and applicant information.
2. The Patent Cooperation Treaty Request Form can be used in national stage applications to present benefit claims and applicant information.

However, there are specific requirements and limitations:

• When using a Patent Cooperation Treaty Request Form in an application under 35 U.S.C. 111, it must be accompanied by a clear indication that treatment as an application under 35 U.S.C. 111 is desired.
• If there are inconsistencies between an ADS and these forms, the ADS will govern.

While these alternative forms are accepted, the USPTO generally prefers the use of its official ADS form for clarity and consistency in processing.

To learn more:

• ADS
• Application Data Sheet
• Patent Law Treaty
• Patent Cooperation Treaty
• USPTO Forms

Yes, you can use an Application Data Sheet (ADS) to correct inventor information in your patent application. The MPEP 601.05(a) states:

If an ADS is filed after the initial filing date of the application, it must identify the information that is being changed (added, deleted, or modified) with underlining for insertions, and strike-through or brackets for text removed.

To correct inventor information:

• Use a supplemental ADS if filing after the initial application date
• Clearly mark changes with underlining for additions and strike-through for removals
• Ensure all inventor information is consistent across all documents
• Be aware that some changes may require additional forms or fees

For significant changes to inventorship, you may need to file a request under 37 CFR 1.48 along with the ADS.

To learn more:

• Application Data Sheet
• ADS
• Inventor Information
• Patent Application
• Correction

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

Can I correct a timely benefit claim without a petition?

Yes, in certain circumstances, you can correct a timely benefit claim without filing a petition. The MPEP 211.02(a) provides guidance on this:

If an applicant includes a benefit claim in a timely filed application data sheet (ADS), but the benefit claim contains a typographical error or improper application number, the applicant may correct the benefit claim without a petition by submitting a corrected ADS in compliance with 37 CFR 1.76(c) if the correction is made within the time period set forth in 37 CFR 1.78.

To correct a timely benefit claim without a petition:

• The original benefit claim must have been submitted in a timely filed ADS
• The correction must be for a typographical error or improper application number
• Submit a corrected ADS complying with 37 CFR 1.76(c)
• Make the correction within the time period specified in 37 CFR 1.78

It’s important to note that this option is only available for minor corrections to timely filed benefit claims. For more substantial changes or untimely claims, a petition may still be required.

To learn more:

• benefit claim
• correction
• ADS
• petition
• patent application

Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):

37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).

To change the order of inventors’ names, you must:

• Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
• Pay the processing fee set forth in 37 CFR 1.17(i).

Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.

To learn more:

• inventor order
• patent application
• name change
• ADS
• application data sheet

Yes, an application data sheet (ADS) can be used to correct certain information in a patent application. According to MPEP 603, deficiencies or inaccuracies due to the failure to meet the requirements of 37 CFR 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with 37 CFR 1.76.

For example, an error in an inventor’s mailing address may be corrected with an application data sheet in accordance with 37 CFR 1.76.

However, it’s important to note that not all corrections can be made with an ADS. Specifically, any correction of inventorship must be pursuant to 37 CFR 1.48. This means that inventorship changes require a separate process and cannot be corrected solely through an ADS.

To learn more:

• application data sheet
• ADS
• correction
• patent application
• inventor information

Can an application data sheet (ADS) be used to name the inventors in a patent application filed before September 16, 2012?

Yes, an application data sheet (ADS) can be used to name the inventors in a patent application filed before September 16, 2012. However, it’s important to note that the ADS is not the only way to name inventors, and there are specific rules governing this process.

According to MPEP 601.05(b):

“37 CFR 1.76(b)(1) states that the application data sheet must include the name, residence, and mailing address of each person believed to be an actual inventor. For nonprovisional applications filed before September 16, 2012, the naming of the inventorship is governed by 37 CFR 1.41(a)(1) in effect as of September 15, 2012.”

This means that while an ADS can be used to name inventors, the inventorship is ultimately determined by the rules set forth in 37 CFR 1.41(a)(1). It’s crucial to ensure that the inventor information provided in the ADS is consistent with other application documents, particularly the oath or declaration.

If there are any discrepancies, the oath or declaration will generally take precedence over the ADS for naming inventors in applications filed before September 16, 2012.

To learn more:

• ADS
• application data sheet
• naming inventors
• patent application

Yes, an Application Data Sheet (ADS) can be used to correct or update inventor information. The MPEP 601.05(a) states:

A corrected ADS may be submitted to correct or update information other than the inventorship. A corrected ADS correcting or updating information other than inventorship which is also reflected in the oath or declaration under 37 CFR 1.63 filed in a pending application must be accompanied by a request to correct or update the information under 37 CFR 1.48(c).

To correct inventorship, a request under 37 CFR 1.48(a) is required along with the corrected ADS. It’s important to follow the proper procedures to ensure the changes are accepted by the USPTO.

To learn more:

• Application Data Sheet
• ADS
• Inventor Information
• Patent Application

For applications filed before September 16, 2012 (pre-AIA applications), the Application Data Sheet (ADS) cannot be used to claim small entity status. According to MPEP 601.05(b):

The ADS cannot be used to make a small entity assertion, which must be done in a separate paper.

To claim small entity status in pre-AIA applications, applicants must submit a separate written assertion of entitlement to small entity status. This can be done through:

• A specific written assertion of entitlement to small entity status
• Payment of the small entity basic filing fee
• Submission of a small entity written assertion in a related application

It’s important to note that for applications filed on or after September 16, 2012, the rules regarding small entity status claims have changed, and the ADS can be used for this purpose in those later applications.

To learn more:

• ADS
• Small Entity Status
• Pre-AIA
• Patent Application

Yes, an Application Data Sheet (ADS) can be used to correct or update information in patent applications filed before September 16, 2012, but there are specific rules and timeframes to consider:

• An ADS can be used to correct or update bibliographic data, especially if submitted within one month of the filing date.
• After the one-month period, corrections may require additional documentation or fees.

According to MPEP 601.05(b): “If an application data sheet is submitted in a patent application under 37 CFR 1.53(b), the application data sheet will be treated as part of the application and will be used to capture the bibliographic data from the application data sheet. Bibliographic data contained in an application data sheet will govern when inconsistent with information provided by another document (e.g., the application transmittal letter).”

This means that the ADS takes precedence over other documents when it comes to bibliographic information. However, for significant changes after the initial filing, applicants may need to submit additional forms or follow specific procedures outlined by the USPTO.

To learn more:

• Application Data Sheet
• ADS
• Bibliographic Data
• Corrections
• Updates

Yes, an Application Data Sheet (ADS) can be used to correct or update information in a patent application. The MPEP 601.05 states:

‘An ADS may be submitted after the initial filing of the application to correct or update information in a previously submitted application data sheet, or in an oath or declaration under 37 CFR 1.63 or 1.67, except that inventorship changes are governed by 37 CFR 1.48, correspondence address changes are governed by 37 CFR 1.33(a), and citizenship changes are governed by 37 CFR 1.63 or 1.67.’

However, it’s important to note that:

• Some changes, such as inventorship, correspondence address, and citizenship, are governed by specific regulations and may require additional procedures.
• When submitting a corrected or updated ADS, applicants should clearly identify the information being changed relative to the most recent filing or ADS.
• For applications filed on or after September 16, 2012, any changes to the ADS must be made in accordance with 37 CFR 1.76(c).

To learn more:

• ADS
• correction
• update
• patent application

Yes, in certain circumstances, alternative forms can be used instead of an Application Data Sheet (ADS) to provide some of the required information:

• Patent Law Treaty Model International Forms can be used for certain information.
• The Patent Cooperation Treaty Request Form can be used in some cases for national stage applications.

37 CFR 1.76(f) states: “The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form.”

However, it’s important to note that if an ADS is also submitted, the information in the ADS will generally govern when inconsistent with these alternative forms. Additionally, an ADS is still required in certain situations, such as when postponing submission of the inventor’s oath or declaration.

To learn more:

• ADS
• Application Data Sheet
• Patent Law Treaty
• Patent Cooperation Treaty
• alternative forms

Can a patent practitioner appointed in the Application Data Sheet (ADS) withdraw from representation?

Yes, a patent practitioner appointed in the Application Data Sheet (ADS) can withdraw from representation, but there are specific procedures to follow:

• The practitioner must submit a request to withdraw.
• The request must comply with 37 CFR 1.36.
• The USPTO must approve the withdrawal.

According to MPEP 402.02(a): “A patent practitioner named in the Application Data Sheet may withdraw as attorney or agent of record upon application to and approval by the USPTO.”

It’s important to note that the practitioner remains responsible for the application until the USPTO approves the withdrawal. The applicant should ensure continuous representation to avoid missing important communications from the USPTO.

To learn more:

• patent practitioner
• withdrawal
• Application Data Sheet
• ADS

Yes, the procedures for correcting inventorship and correcting an inventor’s name are the same. According to MPEP 602.01(c)(2):

The procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors are not distinct.

Both procedures require:

• Submitting an application data sheet (ADS) in accordance with 37 CFR 1.76 that identifies each inventor by their legal name in the desired order.
• Paying the processing fee set forth in 37 CFR 1.17(i).

This unified procedure simplifies the process for applicants when making changes related to inventorship or inventor names in patent applications.

To learn more:

• inventorship correction
• inventor name correction
• patent application
• ADS
• application data sheet