Comments on: Application Data Sheets And How They Help

By: Anonymous

Anonymous — Mon, 28 Dec 2009 22:38:04 +0000

@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.

By: Pittsburgh Patent Lawyer

Pittsburgh Patent Lawyer — Fri, 04 Sep 2009 01:50:17 +0000

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.

By: Katie Cooper

Katie Cooper — Thu, 03 Sep 2009 04:01:50 +0000

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.”

By: Russ Krajec

Russ Krajec — Tue, 02 Jun 2009 12:24:18 +0000

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.

By: Robert K S

Robert K S — Mon, 18 May 2009 18:33:52 +0000

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

By: Robert K S

Robert K S — Mon, 18 May 2009 16:28:26 +0000

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

By: Christopher Paul Mitchell (Chris)

Christopher Paul Mitchell (Chris) — Sat, 16 May 2009 17:18:05 +0000

Mike,

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

–Chris