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 Claims (1)
If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
MPEP 202-Cross-Noting (1)
If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
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)
If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
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:
Inventors are required to provide their place of residence in patent applications. According to MPEP 602.08(a):
“Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76).”
For provisional applications, the residence must be included on the cover sheet or in an application data sheet.
To learn more:
- Inventor Residence
- Patent Application
- Inventor Information
- Oath or Declaration
- Application Data Sheet
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:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is determined according to 37 CFR 1.41(e), which states:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371.
This means that applicants can change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet naming the inventor or joint inventors with the initial submission under 35 U.S.C. 371.
If no application data sheet is provided, the inventorship is the inventor or joint inventors set forth in the international application, including any changes made under PCT Rule 92bis. It’s important to note that 37 CFR 1.41(e) does not allow naming inventors via the inventor’s oath or declaration if an application data sheet is not provided.
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:
Patent Procedure (8)
If there’s an error in the preprinted prior application data, the following steps should be taken:
- If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
- After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
- If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
- In some cases, a petition for an unintentionally delayed benefit claim may also be required.
The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)
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:
Inventors are required to provide their place of residence in patent applications. According to MPEP 602.08(a):
“Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76).”
For provisional applications, the residence must be included on the cover sheet or in an application data sheet.
To learn more:
- Inventor Residence
- Patent Application
- Inventor Information
- Oath or Declaration
- Application Data Sheet
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:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is determined according to 37 CFR 1.41(e), which states:
The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371.
This means that applicants can change inventorship as to the U.S. at the time of national stage entry by simply filing an application data sheet naming the inventor or joint inventors with the initial submission under 35 U.S.C. 371.
If no application data sheet is provided, the inventorship is the inventor or joint inventors set forth in the international application, including any changes made under PCT Rule 92bis. It’s important to note that 37 CFR 1.41(e) does not allow naming inventors via the inventor’s oath or declaration if an application data sheet is not provided.
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: