United States: Patent Quality Chat - February 14, 2017: Learning To Love Application Data Sheets

On February 14, 2017, the USPTO's Patent Quality Chat webinar series continued with "Understanding the ADS (Application Data Sheet):  Little Things Make a Big Difference."  A link to the presentation materials and the 2017 quality chat series can be found here.  For this chat, the USPTO's Janice Tippett, who is a Management and Program Analyst in the Office of Patent Application Processing (OPAP), highlighted the various issues applicants/stakeholders are having with filing Application Data Sheets (ADSs) and corrected ADSs. 

For example, the USPTO strongly recommends filing an application's ADS at the same time the application is filed.  And, do not forget to sign the ADS.  The USPTO uses a properly completed and signed ADS to establish inventorship, establish the applicant, and accept domestic benefit/foreign priority claims.  A signed ADS, however, does not establish power of attorney.  Submitting an ADS after filing, the ADS must still be properly marked up (even if first submitted) and all changes to information already of record must be marked up.

During the discussion, the USPTO also highlighted that "an inventor is established as applicant by default if an applicant is not otherwise named in a properly signed ADS."  In order to change the applicant  after filing an ADS establishing an applicant,  e.g., from the inventor(s) to the assignee, one needs to not only correct the ADS to include the new applicant information, but also submit a request under 37 C.F.R. § 1.46(c) and a statement under 37 C.F.R. § 3.73(c) to show chain of title from the inventor(s) to the assignee.  Another common problem is the inclusion of priority (domestic/foreign) information in the "Filing By Reference" section, rather than the appropriate "Domestic Benefit/National Stage Information" and/or "Foreign Priority Information" sections of the ADS.  The "Filing By Reference" section is not a benefit claim and using it to include priority information results in some unintended consequences that are not easily fixable.

For example, 35 U.S.C. § 111(c) prohibits the rescission of filing by reference.  That is, as explained in M.P.E.P. § 601.01(a) (III), "[a] reference filing statement made upon filing cannot be rescinded because the reference to the previously filed application constitutes the specification and any drawings of the instant application."  It is further noted that "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."  The "Filing By Reference" section is typically used when you do not have access to the specification and drawings of a prior filed application but need to get a filing date.

Other common ADS problems included typographical errors in the priority information, failure to use proper markings on corrected ADSs, incomplete inventor mailing addresses, and failure to include all the information in a particular section of the ADS that contains changes.

From the question and answer session after the presentation, there were a number of questions regarding how one fixes an inventor's misspelled name on an ADS.  Simply correcting a misspelled inventor's name requires filing a request to correct inventorship under 37 C.F.R. § 1.48(a), which should identify the inventorship change and must be accompanied by a signed ADS including the legal name, residence, and mailing address of the inventor or each actual joint inventor, and the processing fee set forth in 37 C.F.R. § 1.17(j); if the request is filed after an Office Action on the merits, in addition to the processing fee in 1.17(j), a fee set forth in 1.17(d) is also required.  Having to file a request to correct inventorship due to a misspelled inventor name reinforces the title of this quality chat, "Little Things Make a Big Difference."

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