Patent Law FAQ

The location of the benefit claim reference depends on the filing date of the application:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

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

For more information on divisional, visit: divisional.

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

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

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: foreign application.

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

A continuation application must include specific information to properly establish its relationship to the prior-filed application. The MPEP outlines these requirements:

“If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.”

Key information to include:

• Application number of the prior-filed application
• Filing date of the prior-filed application
• Relationship between the applications (e.g., continuation)
• Inventor information, including at least one inventor from the prior application

Ensuring all required information is included helps establish the proper benefit claim and relationship between the applications.

To learn more:

• continuation application requirements
• application data sheet
• benefit claim
• patent information

What happens if I need to change the order of benefit claims in my patent application?

Changing the order of benefit claims in a patent application requires specific actions, as outlined in MPEP 211.02(a):

“If applicant needs to change the order of benefit claims presented in an application data sheet or patent, applicant must file a corrected application data sheet under 37 CFR 1.76(c) or a Certificate of Correction, as appropriate.”

The method you choose depends on the status of your application:

• For pending applications: File a corrected Application Data Sheet (ADS) under 37 CFR 1.76(c).
• For issued patents: File a Certificate of Correction.

It’s important to note that changing the order of benefit claims may affect the effective filing date of your application, which could impact patentability considerations.

To learn more:

• benefit claims
• order change
• Application Data Sheet
• Certificate of Correction
• patent application

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

For more information on petition requirements, visit: petition requirements.

For more information on priority restoration, visit: priority restoration.

The method for making a specific reference to a prior-filed application depends on when the application was filed:

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

Additionally, 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.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

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

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

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

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 method for including a benefit claim in a patent application depends on the filing date:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

Additionally, 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 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

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 inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances:

1. For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application.
2. If the continuing application names a new joint inventor, they must provide a new oath or declaration.

The MPEP states: 37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to 37 CFR 1.33(b) stating the name of each inventor in the continuing application.

For applications filed before September 16, 2012, different rules apply regarding the deletion or addition of inventors in continuing applications.

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

For more information on declaration, visit: declaration.

For more information on inventorship, visit: inventorship.

For more information on oath, visit: oath.

Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points:

• For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet
• For earlier applications, the inventorship carries over from the parent application
• In a continuation or divisional, the inventorship must include at least one inventor named in the parent application
• In a continuation-in-part, new inventors can be added to cover new matter
• Inventorship can be corrected if needed using procedures under 37 CFR 1.48

For CPAs filed on or after September 16, 2012, the MPEP states: The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

If the inventorship needs to be changed, a request under 37 CFR 1.48 must be filed.

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

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

For more information on inventorship, visit: inventorship.

Inventorship is a crucial aspect of continuation applications. According to MPEP 201.07:

The inventorship in the continuation application must include at least one inventor named in the prior-filed application…

This requirement ensures a clear line of continuity between the parent application and the continuation application. Key points to consider:

• At least one inventor from the parent application must be included in the continuation application.
• Additional inventors can be added to the continuation application if they contributed to the claimed invention.
• Inventors from the parent application who did not contribute to the claims in the continuation application can be removed.
• Changes in inventorship must be properly documented and may require an oath or declaration from new inventors.

For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), there are additional inventorship requirements:

In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

Always consult with a patent attorney when dealing with inventorship issues in continuation applications to ensure compliance with USPTO requirements.

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

For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (ADS) in compliance with 37 CFR 1.76. For applications filed before September 16, 2012, the reference should be in an ADS and/or in the first sentence(s) of the specification following the title.

The reference must include:

• The prior application number
• The filing date
• The relationship between the applications (continuation, divisional, or continuation-in-part) for nonprovisional applications

For example: “This application is a continuation of Application No. 12/345,678, filed January 1, 2010.”

For provisional applications, only the application number and filing date are required. The relationship should not be specified.

To learn more:

• prior application reference
• application data sheet
• priority claim
• benefit claim
• patent application

To properly identify a foreign application when claiming priority, you must provide the following information:

• Application number
• Country or intellectual property authority
• Day, month, and year of filing

As stated in MPEP 214.01: “The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.”

For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, this information must be provided in an application data sheet. For earlier applications, it may be included in the oath or declaration if not provided in an application data sheet.

To learn more:

• foreign priority
• patent application
• application data sheet
• foreign application identification

To file a foreign priority claim in a U.S. patent application, you must:

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

How do I correct an error in my foreign priority claim?

If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:

• If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
• If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
• For minor typographical errors, a request for a corrected filing receipt may be sufficient.

Always consult with a patent attorney or agent to determine the best course of action for your specific situation.

To correct a benefit claim in your patent application, follow these steps:

1. For applications filed on or after September 16, 2012:
   • Submit a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c)
2. For applications filed before September 16, 2012:
   • Submit an amendment to 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)
3. If the correction is made after the time period set in 37 CFR 1.78:
   • File a petition under 37 CFR 1.78
   • Pay the required petition fee
   • Provide a statement that the entire delay was unintentional

MPEP 211.02(a) states: “If applicant receives a filing receipt with missing or incorrect benefit claim information, applicant may request a corrected filing receipt. The Office will not grant a request for a corrected filing receipt to include a benefit claim unless the proper reference to the prior application is included (i) in an ADS (for applications filed on or after September 16, 2012) or (ii) in the first sentence(s) of the specification or an ADS (for applications filed prior to September 16, 2012) within the time period required by 37 CFR 1.78 with a few exceptions.”

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

To learn more:

• benefit claim correction
• Application Data Sheet
• patent application amendment
• petition

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

Yes, a continuation-in-part (CIP) application can claim benefit from multiple parent applications. The MPEP 201.08 states:

An applicant may in a single application seek to add and claim new matter while also repeating some or all of the subject matter of one or more earlier applications.

This means:

• A CIP can incorporate subject matter from multiple earlier applications.
• It can also add new matter not disclosed in any of the earlier applications.
• The CIP can claim priority to different parent applications for different parts of its disclosure.

Note: The effective filing date for each claim will depend on which parent application(s) provide sufficient support for that claim, as per 35 U.S.C. 112(a). Claims relying on newly added matter will have the CIP’s filing date as their effective date.

To learn more:

• continuation-in-part
• CIP
• multiple parent applications
• priority claim
• 35 U.S.C. 112(a)

To learn more:

• multiple parents
• effective filing date
• Application Data Sheet

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. 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.
4. 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)

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

The inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances:

1. For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application.
2. If the continuing application names a new joint inventor, they must provide a new oath or declaration.

The MPEP states: 37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to 37 CFR 1.33(b) stating the name of each inventor in the continuing application.

For applications filed before September 16, 2012, different rules apply regarding the deletion or addition of inventors in continuing applications.

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

For more information on declaration, visit: declaration.

For more information on inventorship, visit: inventorship.

For more information on oath, visit: oath.

Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points:

• For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet
• For earlier applications, the inventorship carries over from the parent application
• In a continuation or divisional, the inventorship must include at least one inventor named in the parent application
• In a continuation-in-part, new inventors can be added to cover new matter
• Inventorship can be corrected if needed using procedures under 37 CFR 1.48

For CPAs filed on or after September 16, 2012, the MPEP states: The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

If the inventorship needs to be changed, a request under 37 CFR 1.48 must be filed.

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

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

For more information on inventorship, visit: inventorship.

Inventorship is a crucial aspect of continuation applications. According to MPEP 201.07:

The inventorship in the continuation application must include at least one inventor named in the prior-filed application…

This requirement ensures a clear line of continuity between the parent application and the continuation application. Key points to consider:

• At least one inventor from the parent application must be included in the continuation application.
• Additional inventors can be added to the continuation application if they contributed to the claimed invention.
• Inventors from the parent application who did not contribute to the claims in the continuation application can be removed.
• Changes in inventorship must be properly documented and may require an oath or declaration from new inventors.

For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), there are additional inventorship requirements:

In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

Always consult with a patent attorney when dealing with inventorship issues in continuation applications to ensure compliance with USPTO requirements.

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

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. 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.
4. 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)

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

The location of the benefit claim reference depends on the filing date of the application:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

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

For more information on divisional, visit: divisional.

The method for making a specific reference to a prior-filed application depends on when the application was filed:

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

Additionally, 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.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

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

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

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

The method for including a benefit claim in a patent application depends on the filing date:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

Additionally, 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 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: foreign application.

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

For more information on petition requirements, visit: petition requirements.

For more information on priority restoration, visit: priority restoration.

To file a foreign priority claim in a U.S. patent application, you must:

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

How do I correct an error in my foreign priority claim?

If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:

• If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
• If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
• For minor typographical errors, a request for a corrected filing receipt may be sufficient.

Always consult with a patent attorney or agent to determine the best course of action for your specific situation.

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

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

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

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 a patent application is filed by someone other than the inventor under 37 CFR 1.46, the application must contain an application data sheet (ADS) with specific information. According to 37 CFR 1.46(b), the ADS must specify in the applicant information section:

• The assignee
• The person to whom the inventor is under an obligation to assign the invention
• The person who otherwise shows sufficient proprietary interest in the matter

This information should be provided in the applicant information section of the ADS, as specified in 37 CFR 1.76(b)(7). Ensuring this information is correctly included in the ADS is crucial for establishing the proper applicant for the patent application.

To learn more:

• application data sheet
• non-inventor applicant
• patent application
• applicant information

For continuing applications where application papers from a prior application are used, special attention must be paid to the correspondence address. According to 37 CFR 1.33(f):

“Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.”

This means that applicants must explicitly specify the desired correspondence address for the continuing application to ensure proper communication with the USPTO.

To learn more:

• continuing application
• correspondence address
• prior application
• application data sheet

How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?

When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:

1. The correspondence address in the ADS takes precedence if filed with the initial application papers.
2. A customer number provided in a single paper with a clear power of attorney overrides the ADS.
3. If no power of attorney is filed, the correspondence address in the ADS is used.

The MPEP states:

Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record. (MPEP 403)

It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.

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

For more information on Customer Number, visit: Customer Number.

For more information on USPTO, visit: USPTO.

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

How can a practitioner become of record in a patent application filed on or after September 16, 2012?

A practitioner can become of record in a patent application filed on or after September 16, 2012, through the following methods:

• Filing an Application Data Sheet (ADS) that names the practitioner as the representative
• Filing a power of attorney (POA) signed by the applicant
• Filing a patent application transmittal letter signed by the applicant and naming the practitioner as a representative
• Being named as the representative in the oath or declaration

As stated in MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This allows for easier management of multiple practitioners associated with a single customer number.

To learn more:

• practitioner of record
• patent application
• power of attorney
• Application Data Sheet
• customer number

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

How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?

When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:

1. The correspondence address in the ADS takes precedence if filed with the initial application papers.
2. A customer number provided in a single paper with a clear power of attorney overrides the ADS.
3. If no power of attorney is filed, the correspondence address in the ADS is used.

The MPEP states:

Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record. (MPEP 403)

It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.

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

For more information on Customer Number, visit: Customer Number.

For more information on USPTO, visit: USPTO.

Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.

However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.

Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.

However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.

According to MPEP 606, the placement of the title of invention in a patent application is as follows:

“The title of the invention should be placed at the top of the first page of the specification unless it is provided in the application data sheet (see 37 CFR 1.76).”

This means you have two options for placing the title:

• At the top of the first page of the specification
• In the application data sheet

It’s important to note that if you include the title in the application data sheet, you don’t need to repeat it on the first page of the specification.

To learn more:

• patent application
• title placement
• specification
• application data sheet

The location of the benefit claim reference depends on the filing date of the application:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

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

For more information on divisional, visit: divisional.

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

When filing a continuing application using papers from a prior application, it’s important to explicitly specify the desired correspondence address, especially if it was changed during the prosecution of the prior application. 37 CFR 1.33(f) states:

Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.

To ensure the correct correspondence address is used, you should submit either an application data sheet (ADS) or a separate paper clearly identifying the desired correspondence address for the continuing application. This step is crucial to avoid potential communication issues with the USPTO.

To learn more:

• continuing application
• correspondence address
• application data sheet
• prior application

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. 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.
4. 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)

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:

• patent application requirements

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 role of an assignee in a patent application?

An assignee is an entity or person to whom the inventor has transferred some or all rights to the patent. While an assignee cannot be named as the applicant for patent applications filed on or after September 16, 2012, they still play important roles in the patent process. According to MPEP 605: ‘The assignee… may sign the patent application papers if the assignee is an applicant (i.e., the assignee has been named as the applicant for the patent application in the application data sheet).’ This means that while the inventor(s) must be named as the applicant(s), an assignee can sign certain documents and may have rights to the patent once it’s granted.

To learn more:

• assignee
• patent application
• patent rights
• application data sheet

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

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

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

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

When different correspondence addresses are specified in multiple documents submitted with a patent application, the USPTO follows a specific priority order to determine which address to use. According to MPEP 601.03(b), the priority order is as follows:

1. Application Data Sheet (ADS)
2. Application Transmittal
3. Oath or Declaration (unless a more current power of attorney exists)
4. Power of Attorney

The MPEP states: “In the experience of the Office, the ADS is the most recently created document and tends to have the most current address.” Therefore, if you want to ensure a specific correspondence address is used, it’s best to include it in the Application Data Sheet.

To learn more:

• correspondence address priority
• Application Data Sheet
• patent application documents
• USPTO procedure

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: foreign application.

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 a patent application is filed by someone other than the inventor under 37 CFR 1.46, the application must contain an application data sheet (ADS) with specific information. According to 37 CFR 1.46(b), the ADS must specify in the applicant information section:

• The assignee
• The person to whom the inventor is under an obligation to assign the invention
• The person who otherwise shows sufficient proprietary interest in the matter

This information should be provided in the applicant information section of the ADS, as specified in 37 CFR 1.76(b)(7). Ensuring this information is correctly included in the ADS is crucial for establishing the proper applicant for the patent application.

To learn more:

• application data sheet
• non-inventor applicant
• patent application
• applicant information

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

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

A continuation application must include specific information to properly establish its relationship to the prior-filed application. The MPEP outlines these requirements:

“If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.”

Key information to include:

• Application number of the prior-filed application
• Filing date of the prior-filed application
• Relationship between the applications (e.g., continuation)
• Inventor information, including at least one inventor from the prior application

Ensuring all required information is included helps establish the proper benefit claim and relationship between the applications.

To learn more:

• continuation application requirements
• application data sheet
• benefit claim
• patent information

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

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

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 need to change the order of benefit claims in my patent application?

Changing the order of benefit claims in a patent application requires specific actions, as outlined in MPEP 211.02(a):

“If applicant needs to change the order of benefit claims presented in an application data sheet or patent, applicant must file a corrected application data sheet under 37 CFR 1.76(c) or a Certificate of Correction, as appropriate.”

The method you choose depends on the status of your application:

• For pending applications: File a corrected Application Data Sheet (ADS) under 37 CFR 1.76(c).
• For issued patents: File a Certificate of Correction.

It’s important to note that changing the order of benefit claims may affect the effective filing date of your application, which could impact patentability considerations.

To learn more:

• benefit claims
• order change
• Application Data Sheet
• Certificate of 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

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

Correcting inventorship in a nonprovisional application requires:

• A request to correct inventorship under 37 CFR 1.48(a)
• An application data sheet (ADS) identifying the inventorship change
• A fee as set forth in 37 CFR 1.17(i)
• A statement from each person being added or deleted as an inventor that the error occurred without deceptive intent

As stated in MPEP 602.01(c)(1): ‘If the inventive entity is set forth in error in an executed § 1.63 or § 1.64 declaration in a nonprovisional application, and such error arose without any deceptive intent on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended pursuant to 37 CFR 1.48(a).’

To learn more:

• inventorship correction
• nonprovisional application
• 37 CFR 1.48(a)
• application data sheet

To learn more:

• 37 CFR 1.48(a)

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

For more information on petition requirements, visit: petition requirements.

For more information on priority restoration, visit: priority restoration.

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

The method for making a specific reference to a prior-filed application depends on when the application was filed:

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

Additionally, 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.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

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

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

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

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

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

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 method for including a benefit claim in a patent application depends on the filing date:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

Additionally, 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 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

For continuing applications where application papers from a prior application are used, special attention must be paid to the correspondence address. According to 37 CFR 1.33(f):

“Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.”

This means that applicants must explicitly specify the desired correspondence address for the continuing application to ensure proper communication with the USPTO.

To learn more:

• continuing application
• correspondence address
• prior application
• application data sheet

For continuing applications filed on or after September 16, 2012, inventorship is determined as follows:

1. If an application data sheet (ADS) is filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is specified in the ADS.
2. If no ADS is filed before or concurrently with the copy of the inventor’s oath or declaration, the inventorship is set forth in the copy of the inventor’s oath or declaration from the earlier-filed application.
3. If there’s no ADS and the copy of the oath or declaration is accompanied by a signed statement pursuant to 37 CFR 1.33(b), the inventorship is as stated in that signed statement.

According to MPEP 602.05(a): For continuing applications filed on or after September 16, 2012 under 37 CFR 1.53(b), the inventorship is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a signed statement pursuant to 37 CFR 1.33(b) that states the name of each inventor in the continuing application.

Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with 37 CFR 1.63, except as provided in 37 CFR 1.64.

To learn more:

• inventorship
• continuing application
• application data sheet
• AIA
• post-AIA

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 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

How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?

When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:

1. The correspondence address in the ADS takes precedence if filed with the initial application papers.
2. A customer number provided in a single paper with a clear power of attorney overrides the ADS.
3. If no power of attorney is filed, the correspondence address in the ADS is used.

The MPEP states:

Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record. (MPEP 403)

It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.

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

For more information on Customer Number, visit: Customer Number.

For more information on USPTO, visit: USPTO.

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:

• International application
• National stage entry
• Inventorship
• Application data sheet

The inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances:

1. For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application.
2. If the continuing application names a new joint inventor, they must provide a new oath or declaration.

The MPEP states: 37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to 37 CFR 1.33(b) stating the name of each inventor in the continuing application.

For applications filed before September 16, 2012, different rules apply regarding the deletion or addition of inventors in continuing applications.

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

For more information on declaration, visit: declaration.

For more information on inventorship, visit: inventorship.

For more information on oath, visit: oath.

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

Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points:

• For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet
• For earlier applications, the inventorship carries over from the parent application
• In a continuation or divisional, the inventorship must include at least one inventor named in the parent application
• In a continuation-in-part, new inventors can be added to cover new matter
• Inventorship can be corrected if needed using procedures under 37 CFR 1.48

For CPAs filed on or after September 16, 2012, the MPEP states: The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

If the inventorship needs to be changed, a request under 37 CFR 1.48 must be filed.

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

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

For more information on inventorship, visit: inventorship.

Inventorship is a crucial aspect of continuation applications. According to MPEP 201.07:

The inventorship in the continuation application must include at least one inventor named in the prior-filed application…

This requirement ensures a clear line of continuity between the parent application and the continuation application. Key points to consider:

• At least one inventor from the parent application must be included in the continuation application.
• Additional inventors can be added to the continuation application if they contributed to the claimed invention.
• Inventors from the parent application who did not contribute to the claims in the continuation application can be removed.
• Changes in inventorship must be properly documented and may require an oath or declaration from new inventors.

For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), there are additional inventorship requirements:

In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

Always consult with a patent attorney when dealing with inventorship issues in continuation applications to ensure compliance with USPTO requirements.

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

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

For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (ADS) in compliance with 37 CFR 1.76. For applications filed before September 16, 2012, the reference should be in an ADS and/or in the first sentence(s) of the specification following the title.

The reference must include:

• The prior application number
• The filing date
• The relationship between the applications (continuation, divisional, or continuation-in-part) for nonprovisional applications

For example: “This application is a continuation of Application No. 12/345,678, filed January 1, 2010.”

For provisional applications, only the application number and filing date are required. The relationship should not be specified.

To learn more:

• prior application reference
• application data sheet
• priority claim
• benefit claim
• patent application

To properly identify a foreign application when claiming priority, you must provide the following information:

• Application number
• Country or intellectual property authority
• Day, month, and year of filing

As stated in MPEP 214.01: “The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.”

For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, this information must be provided in an application data sheet. For earlier applications, it may be included in the oath or declaration if not provided in an application data sheet.

To learn more:

• foreign priority
• patent application
• application data sheet
• foreign application identification

To file a foreign priority claim in a U.S. patent application, you must:

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

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

How do I correct an error in my foreign priority claim?

If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:

• If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
• If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
• For minor typographical errors, a request for a corrected filing receipt may be sufficient.

Always consult with a patent attorney or agent to determine the best course of action for your specific situation.

To correct a benefit claim in your patent application, follow these steps:

1. For applications filed on or after September 16, 2012:
   • Submit a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c)
2. For applications filed before September 16, 2012:
   • Submit an amendment to 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)
3. If the correction is made after the time period set in 37 CFR 1.78:
   • File a petition under 37 CFR 1.78
   • Pay the required petition fee
   • Provide a statement that the entire delay was unintentional

MPEP 211.02(a) states: “If applicant receives a filing receipt with missing or incorrect benefit claim information, applicant may request a corrected filing receipt. The Office will not grant a request for a corrected filing receipt to include a benefit claim unless the proper reference to the prior application is included (i) in an ADS (for applications filed on or after September 16, 2012) or (ii) in the first sentence(s) of the specification or an ADS (for applications filed prior to September 16, 2012) within the time period required by 37 CFR 1.78 with a few exceptions.”

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

To learn more:

• benefit claim correction
• Application Data Sheet
• patent application amendment
• petition

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

How did the ADS format differ for applications filed before September 16, 2012 compared to later applications?

The Application Data Sheet (ADS) format for applications filed before September 16, 2012 (pre-AIA) differed from the format used in later applications. According to MPEP 601.05(b):

For applications filed before September 16, 2012, the Office continued to use the ADS form PTO/SB/14 that was available prior to September 16, 2012.

Key differences in the pre-September 16, 2012 ADS format include:

• Form number: The pre-AIA ADS used form PTO/SB/14, while post-AIA applications use form PTO/AIA/14.
• Inventor information: The pre-AIA ADS didn’t require as detailed inventor information as the post-AIA version.
• Domestic benefit/Foreign priority: The format for claiming these was simpler in the pre-AIA ADS.
• Assignee information: The pre-AIA ADS had a different section for providing assignee information.
• Signature requirements: The pre-AIA ADS had different signature requirements compared to the post-AIA version.

It’s important to use the correct ADS form based on your application’s filing date to ensure compliance with USPTO requirements and proper processing of your application.

To learn more:

• Application Data Sheet
• ADS format
• pre-AIA
• post-AIA
• patent application

To correct or update the name of the applicant after filing:

1. File a request under 37 CFR 1.46(c)(1) no later than payment of the issue fee
2. Include an application data sheet (ADS) under 37 CFR 1.76 specifying the correct or updated name of the applicant
3. Show appropriate markings in the ADS (underlining for additions, strikethrough for deletions)

The MPEP states: Any request to correct or update the name of the applicant after an applicant has been specified under 37 CFR 1.46(b) must include an application data sheet under 37 CFR 1.76 specifying the correct or updated name of the applicant in the applicant information section.

For minor typographical errors detected after payment of the issue fee, either withdraw the application from issue or file a certificate of correction after patent issuance.

To learn more:

• applicant name correction
• application data sheet
• typographical errors

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

How can I correct information in an Application Data Sheet (ADS) after submission?

To correct information in an Application Data Sheet (ADS) after submission, you must follow specific procedures outlined in the MPEP:

“If an ADS has been previously submitted, the ADS provided with a continuing application, reissue application, or reexamination proceeding should be marked to show the changes from the previously submitted ADS.” (MPEP 601.05(a))

Here’s how to make corrections:

• Submit a new ADS with clearly marked changes.
• Use strikethrough for deletions and underlining for insertions.
• Include all sections of the ADS, not just those being changed.
• For inventor information changes, comply with 37 CFR 1.48.
• For benefit claims corrections, see 37 CFR 1.78.

Remember, some changes may require additional forms or fees. Always check the current USPTO guidelines for the most up-to-date requirements.

To learn more:

• ADS corrections
• Application Data Sheet
• patent application
• USPTO procedures

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

An assignee can become the applicant for a patent application by following these steps:

1. File the application under 37 CFR 1.46
2. Include an application data sheet (ADS) under 37 CFR 1.76 specifying the assignee as the applicant in the applicant information section
3. Record documentary evidence of ownership (e.g., assignment) as provided in 37 CFR part 3 no later than the date the issue fee is paid

The MPEP states: If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid.

To learn more:

• assignee
• patent applicant
• application data sheet
• documentary evidence

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

How can a practitioner become of record in a patent application filed on or after September 16, 2012?

A practitioner can become of record in a patent application filed on or after September 16, 2012, through the following methods:

• Filing an Application Data Sheet (ADS) that names the practitioner as the representative
• Filing a power of attorney (POA) signed by the applicant
• Filing a patent application transmittal letter signed by the applicant and naming the practitioner as a representative
• Being named as the representative in the oath or declaration

As stated in MPEP 403.01(a): ‘A power of attorney or authorization of agent may be given to a customer number in applications filed on or after September 16, 2012.’ This allows for easier management of multiple practitioners associated with a single customer number.

To learn more:

• practitioner of record
• patent application
• power of attorney
• Application Data Sheet
• customer number

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

Can the inventor’s oath or declaration be submitted after filing the patent application?

Yes, the inventor’s oath or declaration can be submitted after filing the patent application. The MPEP 602.01(a) states:

“The inventor’s oath or declaration may be submitted after the application filing date. If the oath or declaration is filed after the application filing date, it must be accompanied by the surcharge under 37 CFR 1.16(f).”

However, it’s important to note:

• The application must still name each inventor at the time of filing
• An application data sheet (ADS) under 37 CFR 1.76 must be submitted with the application filing
• The oath or declaration should be submitted no later than the date on which the issue fee is paid

Submitting the oath or declaration after filing may incur additional fees and potentially delay the examination process.

To learn more:

• inventor’s oath
• declaration
• late submission
• application data sheet

Yes, the filing of an inventor’s oath or declaration can be postponed under certain conditions. According to the MPEP:

If an application data sheet has been submitted, applicant may postpone the filing of the inventor’s oath or declaration until the application is in condition for allowance for applications filed on or after September 16, 2012.

This provision allows applicants more flexibility in the timing of submitting the inventor’s oath or declaration. However, it’s important to note that the oath or declaration must be submitted no later than the date on which the issue fee is paid, as required by 35 U.S.C. 115(f).

To learn more:

• inventor’s oath
• declaration
• patent application
• postponement
• application data sheet

Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.

However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.

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 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

Yes, a nonprovisional application can be filed by reference to a previously filed application under certain conditions:

• The application must be filed on or after December 18, 2013
• A reference to the previously filed application must be made in an application data sheet
• The reference must indicate that the specification and any drawings of the new application are replaced by the reference
• The reference must specify the previously filed application by application number, filing date, and intellectual property authority

The USPTO states: As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application.

However, the USPTO cautions: Accordingly, to avoid the risk of incorrect filings and the required surcharge, applicants should simply file a copy of the specification and drawings of the previously filed application, if available, instead of relying upon the reference filing provisions.

To learn more:

• reference filing
• previously filed application
• application data sheet
• filing by reference

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, 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, a continuation-in-part (CIP) application can claim benefit from multiple parent applications. The MPEP 201.08 states:

An applicant may in a single application seek to add and claim new matter while also repeating some or all of the subject matter of one or more earlier applications.

This means:

• A CIP can incorporate subject matter from multiple earlier applications.
• It can also add new matter not disclosed in any of the earlier applications.
• The CIP can claim priority to different parent applications for different parts of its disclosure.

Note: The effective filing date for each claim will depend on which parent application(s) provide sufficient support for that claim, as per 35 U.S.C. 112(a). Claims relying on newly added matter will have the CIP’s filing date as their effective date.

To learn more:

• continuation-in-part
• CIP
• multiple parent applications
• priority claim
• 35 U.S.C. 112(a)

To learn more:

• multiple parents
• effective filing date
• Application Data Sheet

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

According to MPEP 606, the placement of the title of invention in a patent application is as follows:

“The title of the invention should be placed at the top of the first page of the specification unless it is provided in the application data sheet (see 37 CFR 1.76).”

This means you have two options for placing the title:

• At the top of the first page of the specification
• In the application data sheet

It’s important to note that if you include the title in the application data sheet, you don’t need to repeat it on the first page of the specification.

To learn more:

• patent application
• title placement
• specification
• application data sheet

The location of the benefit claim reference depends on the filing date of the application:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

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

For more information on divisional, visit: divisional.

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

When filing a continuing application using papers from a prior application, it’s important to explicitly specify the desired correspondence address, especially if it was changed during the prosecution of the prior application. 37 CFR 1.33(f) states:

Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.

To ensure the correct correspondence address is used, you should submit either an application data sheet (ADS) or a separate paper clearly identifying the desired correspondence address for the continuing application. This step is crucial to avoid potential communication issues with the USPTO.

To learn more:

• continuing application
• correspondence address
• application data sheet
• prior application

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. 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.
4. 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)

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:

• patent application requirements

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 role of an assignee in a patent application?

An assignee is an entity or person to whom the inventor has transferred some or all rights to the patent. While an assignee cannot be named as the applicant for patent applications filed on or after September 16, 2012, they still play important roles in the patent process. According to MPEP 605: ‘The assignee… may sign the patent application papers if the assignee is an applicant (i.e., the assignee has been named as the applicant for the patent application in the application data sheet).’ This means that while the inventor(s) must be named as the applicant(s), an assignee can sign certain documents and may have rights to the patent once it’s granted.

To learn more:

• assignee
• patent application
• patent rights
• application data sheet

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

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

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

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

When different correspondence addresses are specified in multiple documents submitted with a patent application, the USPTO follows a specific priority order to determine which address to use. According to MPEP 601.03(b), the priority order is as follows:

1. Application Data Sheet (ADS)
2. Application Transmittal
3. Oath or Declaration (unless a more current power of attorney exists)
4. Power of Attorney

The MPEP states: “In the experience of the Office, the ADS is the most recently created document and tends to have the most current address.” Therefore, if you want to ensure a specific correspondence address is used, it’s best to include it in the Application Data Sheet.

To learn more:

• correspondence address priority
• Application Data Sheet
• patent application documents
• USPTO procedure

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: foreign application.

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 a patent application is filed by someone other than the inventor under 37 CFR 1.46, the application must contain an application data sheet (ADS) with specific information. According to 37 CFR 1.46(b), the ADS must specify in the applicant information section:

• The assignee
• The person to whom the inventor is under an obligation to assign the invention
• The person who otherwise shows sufficient proprietary interest in the matter

This information should be provided in the applicant information section of the ADS, as specified in 37 CFR 1.76(b)(7). Ensuring this information is correctly included in the ADS is crucial for establishing the proper applicant for the patent application.

To learn more:

• application data sheet
• non-inventor applicant
• patent application
• applicant information

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

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

A continuation application must include specific information to properly establish its relationship to the prior-filed application. The MPEP outlines these requirements:

“If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.”

Key information to include:

• Application number of the prior-filed application
• Filing date of the prior-filed application
• Relationship between the applications (e.g., continuation)
• Inventor information, including at least one inventor from the prior application

Ensuring all required information is included helps establish the proper benefit claim and relationship between the applications.

To learn more:

• continuation application requirements
• application data sheet
• benefit claim
• patent information

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

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

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 need to change the order of benefit claims in my patent application?

Changing the order of benefit claims in a patent application requires specific actions, as outlined in MPEP 211.02(a):

“If applicant needs to change the order of benefit claims presented in an application data sheet or patent, applicant must file a corrected application data sheet under 37 CFR 1.76(c) or a Certificate of Correction, as appropriate.”

The method you choose depends on the status of your application:

• For pending applications: File a corrected Application Data Sheet (ADS) under 37 CFR 1.76(c).
• For issued patents: File a Certificate of Correction.

It’s important to note that changing the order of benefit claims may affect the effective filing date of your application, which could impact patentability considerations.

To learn more:

• benefit claims
• order change
• Application Data Sheet
• Certificate of 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

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

Correcting inventorship in a nonprovisional application requires:

• A request to correct inventorship under 37 CFR 1.48(a)
• An application data sheet (ADS) identifying the inventorship change
• A fee as set forth in 37 CFR 1.17(i)
• A statement from each person being added or deleted as an inventor that the error occurred without deceptive intent

As stated in MPEP 602.01(c)(1): ‘If the inventive entity is set forth in error in an executed § 1.63 or § 1.64 declaration in a nonprovisional application, and such error arose without any deceptive intent on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended pursuant to 37 CFR 1.48(a).’

To learn more:

• inventorship correction
• nonprovisional application
• 37 CFR 1.48(a)
• application data sheet

To learn more:

• 37 CFR 1.48(a)

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

For more information on petition requirements, visit: petition requirements.

For more information on priority restoration, visit: priority restoration.

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

The method for making a specific reference to a prior-filed application depends on when the application was filed:

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

Additionally, 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.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

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

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

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

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

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

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 method for including a benefit claim in a patent application depends on the filing date:

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

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

Additionally, 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 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

For continuing applications where application papers from a prior application are used, special attention must be paid to the correspondence address. According to 37 CFR 1.33(f):

“Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.”

This means that applicants must explicitly specify the desired correspondence address for the continuing application to ensure proper communication with the USPTO.

To learn more:

• continuing application
• correspondence address
• prior application
• application data sheet

For continuing applications filed on or after September 16, 2012, inventorship is determined as follows:

1. If an application data sheet (ADS) is filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is specified in the ADS.
2. If no ADS is filed before or concurrently with the copy of the inventor’s oath or declaration, the inventorship is set forth in the copy of the inventor’s oath or declaration from the earlier-filed application.
3. If there’s no ADS and the copy of the oath or declaration is accompanied by a signed statement pursuant to 37 CFR 1.33(b), the inventorship is as stated in that signed statement.

According to MPEP 602.05(a): For continuing applications filed on or after September 16, 2012 under 37 CFR 1.53(b), the inventorship is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a signed statement pursuant to 37 CFR 1.33(b) that states the name of each inventor in the continuing application.

Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with 37 CFR 1.63, except as provided in 37 CFR 1.64.

To learn more:

• inventorship
• continuing application
• application data sheet
• AIA
• post-AIA

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 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

How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?

When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules:

1. The correspondence address in the ADS takes precedence if filed with the initial application papers.
2. A customer number provided in a single paper with a clear power of attorney overrides the ADS.
3. If no power of attorney is filed, the correspondence address in the ADS is used.

The MPEP states:

Where an applicant provides a correspondence address in an application data sheet (ADS) that is different from the address associated with a customer number provided in a single paper (e.g., in a power of attorney or inventor’s oath or declaration), the address in the ADS will be the correspondence address of record. (MPEP 403)

It’s crucial to ensure consistency in your filings to avoid confusion. If you need to change the correspondence address after filing, you should submit a separate change of address request or update your customer number information.

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

For more information on Customer Number, visit: Customer Number.

For more information on USPTO, visit: USPTO.

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:

• International application
• National stage entry
• Inventorship
• Application data sheet