Application Data Sheet & Corrected ADS - PRV...Application Data Sheet & Corrected ADS. What is an Application Data Sheet (ADS)? •An ADS is a document providing detailed application

© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

Application Data Sheet & Corrected ADS

What is an Application Data Sheet (ADS)?

• An ADS is a document providing detailed application information to the USPTO.

• It is the USPTO’s rule that an ADS must be filed in:– applications claiming priority; and

– provisionals when the Assignee is the Applicant.

• It is BSKB’s policy to submit an ADS with all new non-provisional applications (there exists a hidden benefit that if a fillable .pdf ADS is submitted, there is a decrease in USPTO errors).– With provisionals, we follow USPTO guidelines.


Where to locate an ADS

• ADSs may be obtained from the USPTO website at: http://www.uspto.gov/patent/patents-forms or using the “WEB” tab in Patricia:


http://www.uspto.gov/patent/patents-forms

Header

This information is self-explanatory


Secrecy Order Checkbox

DO NOT check this box unless instructed to do so!!


Inventor Information


Correspondence Information


Application Information

• This information completes the headers:

Complete

based on

attorney

preference.


Publication Information

One of these boxes should only be checked upon client/attorney direction

Request NOT to publish is infrequently utilized.


Representative Information

Be sure to enter the appropriate customer number.Some clients have their own customer

number.


Domestic Benefit Example

• When filing a new application and claiming domestic priority, leave the FIRST Application Number (circled below) blank.


National Stage Information Example

• National Stage Information is entered under the same section as Domestic Benefit.


Foreign Priority Information

The DAS Access Code is provided by the client.Participating PDX Countries are: JP, EP, CN, KR and WO

The DAS Code is required for JP priority (for applications filed on or after 1 OCT 2017).


Priority Information

• Per the USPTO:

The order of the applications should be listed beginning from the instant application and continuing through the list

of parents in reverse chronological order, meaning:

newest to oldest.


Priority Information (cont.)


Priority Information IMPORTANT

• Take great care in entering the priority information, including requisite quality review.

• Errors in priority, if discovered after a certain time period, can only be fixed with a Petition.

• This Petition is very costly!


Related Applications

Foreign applications that are “related” applications should be identified in the specification, NOT on the ADS.

The ADS should only list applications to which the current application claims priority.


Transitional Application Statement

• When filing an application and claiming priority to an application filed prior to March 16, 2013, flag this section for the attorney asking if this box should be checked.


Transitional Application Statement

• Transitional Application Statement

– The transitional statement check box enables us to indicate that there are claims to new subject matter in the existing application.

This box should only be checked upon client/attorneydirection!


Authorization to Permit Access


Authorization to Permit Access

To maintain current procedures, the default will be to select only the second “opt-

out” checkbox on the ADS, unless the client specifically instructs us to grant access


Applicant Information


Applicant InformationMailing Address


Non-Applicant Assignee Information


Signature Page


Signature Requirement

• An ADS MUST be signed.• BSKB procedure is to have the ADS electronically signed

by the attorney/agent, so that the electronic fillable .pdf is uploaded to the USPTO.– By uploading the electronically signed fillable .pdf of the ADS, the

USPTO will capture the information from the upload. This has been seen to drastically decrease the number of USPTO errors associated with scanned .pdf ADS forms being uploaded.

• An unsigned ADS will be treated ONLY as a transmittal letter.


Corrected ADS

• Any subsequent ADS filed after the first filed ADS


ADS Form

• Note that there are different ADS forms to make corrections for pre-AIA and AIA applications.

– Pre-AIA: Use PTO - Supplemental Application Data Sheet

– Post-AIA: Use PTO - AIA Application Data Sheet


Correcting/Updating an ADS

• Information previously submitted (in an ADS, inventor’s oath or declaration, or otherwise of record) may be corrected or updated until payment of the issue fee by submitting a new ADS providing corrected or updated information.

– For Inventorship/Assignee changes, foreign priority and domestic benefit information changes, and correspondence address changes there are different rules to follow.


Corrected ADS (AIA)

• Only the application information and the sections containing changes or updates are required.

• Must include the section headings for each section included in the ADS.

• Must show changes using:– underlining for insertions, and – strike-through or brackets (for less than 5 characters) for

text being removed.• Identification of information being changed is not

required for an ADS included with an initial submission under 35 U.S.C. 371 (National Stage Application)


Corrected ADS (AIA)Instructions to PTO

• Complete any instructions to the PTO:

– Look for instructions to the PTO immediately above

each section heading (e.g., “Please add/amend ____

as indicated”).

– Edit as needed to identify the specific data being

revised.


Corrected ADS (AIA)Multiple Names

• If the case has multiple inventors, applicants and/or non-applicant assignees:

– The entire section must be submitted.

– DO NOT delete the main SECTION HEADING (e.g., “Inventor Information”) unless you remove ALL inventors, applicants or non-applicant assignees from this section.


Corrected ADS (AIA)Domestic Priority

• Manually enter updated priority information.Click the “Add Add’l Domestic Priority” button to add additional rows.


QUESTIONS


Documents

Application Data Sheet & Corrected ADS - PRV...Application Data Sheet & Corrected ADS. What is an Application Data Sheet (ADS)? •An ADS is a document providing detailed application