Application Data Sheets And How They Help

May 15, 2009

in Practice Suggestions,Prosecution Strategy,The MPEP

An application data sheet (ADS) is a document that provides the bibliographic data for an application to the USPTO.  The USPTO prefers, but does not require, the use of an ADS.  An ADS can be advantageous, however, because it tends to reduce errors in the conversion/recordation of application data into the  USPTO’s official electronic  data record.  While electronic filing via the USPTO’s EFS-Web has certainly reduced some errors, the USPTO relies on the uploaded documents (e.g., declaration, specification), rather than a user’s input, to create its official electronic record.  For example, in a national stage application filed under 35 USC § 371, the USPTO might look to the publication of the international application for the title and to other documents for the listing of inventors and the correspondence address.   The use of an ADS, because it provides this information in a single document and in a specified format, improves the accuracy of this conversion and the resulting electronic record.

Examples of What Can Happen Without an ADS
The USPTO’s procedures for converting the application data of paper applications and for recording electronic data into its official data record are surprisingly accurate, in view of the number of application data records it must create.  Nonetheless, as with any system, errors do occur.  And, even when they are remedied early in the prosecution process, they still take time and can cause processing delays.  Worse yet, sometimes errors in the USPTO data records are not corrected.  Consider the following U.S. patents, which could have benefited from an ADS:

  1. U.S. Patent Nos. 6,112,451, 6,631,400, and 6,637,044, each for a “Statement Regarding Federally Sponsored Research or Development”;
  2. U.S. Patent No. 7,263,562 for a “Method and System for Describing Uploaded Files Statement Regarding Federally Sponsored Research or Development”; and
  3. U.S. Patent No. 6,389,215 for “Low Birefringent Polyimides for Optical Waveguides Statement Regarding Federally Sponsored Research or Development”.

And then there are:

  1. U.S. Patent No. 6,930,045 for “Cross Reference to Related Application”;
  2. U.S. Patent No. 6,829,526 for a “Train Detection System and a Train Detection Method Cross Reference to Related Application”; and
  3. U.S. Patent No.  6,786,734 for an “Electrical Adapter With a Foldable Housing Cross-Reference to Related Application”.

Clearly, there are instances when an ADS would have helped the USPTO more accurately convert bibliographic information into an official data record.

The Requirements for an ADS
37 CFR § 1.76 governs application data sheets and sets forth specific requirements for each ADS.  The following are some of the more noteworthy.

1.  An ADS may be used in provisional and nonprovisional applications.  37 CFR § 1.37(a).

2.  The USPTO offers a fillable pdf form (Form PTO/SB/14) on its website hereCAUTION – The USPTO ADS fillable form must be submitted as a text-based PDF file. A scanned version of the ADS fillable form will be rejected via EFS-Web because EFS-Web will not be able to auto-load scanned in data into backend systems.   (Answer to USPTO.GOV EFS-Web Help FAQ # 252).

3.  An ADS must be in a specific format.  An ADS must be titled “Application Data Sheet” and must contain all of the following section headings, with any appropriate data for each section heading:

  1. Applicant information (i.e., the name, residence, mailing address, and citizenship of each applicant);
  2. Correspondence information (i.e., the correspondence address, which may be indicated by reference to a customer number);
  3. Application information (i.e., the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, any docket number assigned to the application, the type of application);
  4. Representative information (i.e., the registration number of each practitioner having a power of attorney in the application);
  5. Domestic priority information (i.e., the application number, the filing date, the status, and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c));
  6. Foreign priority information (i.e., the application number, country, and filing date of each foreign application for which priority is claimed) (NOTE – 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(a); and
  7. Assignee information.

37 CFR §§ 1.76 (a) and (b).

4.  Providing domestic priority information in an ADS constitutes the specific reference required by 35 USC § 119(e) or 120, and 37 CFR §§ 1.78(a)(2) or 1.78(a)(5), such that this information need not otherwise be made part of the specification.  37 CFR 1.76 (b)(5).

5.  The USPTO will interpret any blank section in an ADS to mean that there is no corresponding data for that label anywhere in the application.  37 CFR § 1.76(a).

6.  In the event of an inconsistency between the ADS and other submitted documents, the timing of the submission of the conflicting information controls.

  • When the conflicting information is submitted at different times – the latest submitted information governs regardless of how it is supplied, except that an oath or declaration governs inconsistencies in the naming of inventors or their citizenship.
  • When the conflicting information is submitted at the same time – the ADS will govern when the inconsistent information is supplied at the same time, except that an oath or declaration governs inconsistencies in the naming of inventors or their citizenship.

37 CFR 1.76 (d)

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 7 comments… read them below or add one }

Christopher Paul Mitchell (Chris) May 16, 2009 at 5:18 pm

Mike,

You make a good case for using ADSs – and in good humor!

–Chris

Robert K S May 18, 2009 at 4:28 pm

There’s one other great reason to use an ADS, which comes out of the last noted point (the fact that the ADS governs): If you want to retitle your continuation application, you can do so on the first application submission and without needing to put the title change in an amendment, even if the older application’s title is found at the top of the specification and in other other photocopied paperwork. This is because the ADS information controls where information conflicts. So, the ADS helps you save a step.

All the best,
Robert K S

Robert K S May 18, 2009 at 6:33 pm

More hilarity:
Patents titled “Technical field”:
6,803,054 (actually for a dissolving drug tablet)
6,710,044 (actually for a pharmaceutical compound)
6,349,488 (actually for a vehicle-mounted trench-digging apparatus)
5,871,412 (actually for an automotive cooling assembly)
6,062,433 (actually for a dispenser nozzle)

Couldn’t find any named “summary of the invention” or “abstract”…

RKS

Russ Krajec June 2, 2009 at 12:24 pm

One well respected practitioner has voiced reservations about using an ADS. His concern is that by signing the ADS, you are certifying that all of the information is correct, including the inventor’s address and citizenship, both of which can be difficult to verify.

This could lead to an inequitable conduct assertion if the patent was ever litigated and that information was shown to be false.

Katie Cooper September 3, 2009 at 12:01 am

Also, MPEP Section 601 states:

“If an application data sheet is used, data supplied in the application data sheet need not be provided elsewhere in the application except that the citizenship of each inventor must be provided in the oath or declaration even if this information is provided in the application data sheet.”

Pittsburgh Patent Lawyer September 3, 2009 at 9:50 pm

This is a difficult one. All of the benefits mentioned above are valuable. However, I have been also been told that by filing you are certifying that information is correct. Additionally I have been told there are a lot of guidelines to follow some of which the PTO’s form does not comply with (I cannot personally vouch for this as this is what another lawyer told me about the ADS and have not had time to check it out). So while I believe it has benefits I have been reluctant to use it.

Anonymous December 28, 2009 at 6:38 pm

@Robert K S and Pittsburgh Patent Lawyer:

Re: “certifying,” the signature line of the UPSTO’s ADS form PTO/SB/14 refers to 37 C.F.R. 10.18. I don’t believe that 37 C.F.R. 10.18 should be read to impose more of an obligation than it expressly states. Particularly, I don’t believe that 37 C.F.R. 10.18 should be read as imposing an obligation to verify – that requirement is simply not in the express language of 37 C.F.R. 10.18.

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