Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (3)
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:
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- 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.
- 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.
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:
MPEP 211 – Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- 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.
- 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.
MPEP 400 – Representative of Applicant or Owner (1)
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 Law (8)
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:
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:
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:
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:
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:
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:
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- 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.
- 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.
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:
Patent Procedure (8)
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:
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:
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:
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:
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:
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:
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- 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.
- 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.
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: