601.05(b) Application Data Sheet (ADS) in Application Filed Before September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 601.05(a) for a discussion of the requirements of an ADS for applications filed on or after September 16, 2012.]

I. BIBLIOGRAPHIC INFORMATION

The naming of the inventors and the setting forth of the citizenship of each inventor must be provided in the oath or declaration under pre-AIA 37 CFR 1.63 (as required by pre-AIA 35 U.S.C. 115) even if this information is provided in the application data sheet.

Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. (If the applicant is not an inventor, this information also includes the applicant’s authority (pre-AIA 37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant customarily receives mail.

Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see pre-AIA 37 CFR 1.33(a)).

Application information includes the title of the invention, a suggested classification by class and subclass, the Technology Center (TC) to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Application information also includes whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to 37 CFR 5.2(c).

Although the submission of the information related to a suggested classification and TC may be provided for both provisional and nonprovisional applications filed before September 16, 2012, the Office no longer utilizes this information and will continue to follow its present procedures for classifying and assigning new applications. Similarly for the suggested drawing figure, the Office may decide to print another figure on the front page of any patent application publication or any patent issuing from the application.

Pre-AIA 37 CFR 1.76(b)(3) also requests that the plant patent applicant state the Latin name and the variety denomination for the plant claimed. The Latin name and the variety denomination of the claimed plant are usually included in the specification of the plant patent application, and will be included in any plant patent or plant patent application publication if included in an application data sheet or patent application. The Office, pursuant to the “International Convention for the Protection of New Varieties of Plants” (generally known by its French acronym as the UPOV convention), has been asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in an ADS will make the process of compiling this database more efficient.

Representative information includes the registration number appointed with a power of attorney in the application (preferably by reference to a customer number). Pre-AIA 37 CFR 1.76(b)(4) states that providing this information in the application data sheet does not constitute a power of attorney in the application (see  pre-AIA 37 CFR 1.32). This is because the Office does not expect the application data sheet to be executed by the party (applicant or assignee) who may appoint a power of attorney in the application.

Domestic priority information includes the application number (series code and serial number), the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Pre-AIA 37 CFR 1.76(b)(5) states that providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C.119(e) or 120. Since the application data sheet, if provided, is considered part of the application, the specific reference to an earlier filed provisional or nonprovisional application in the application data sheet satisfies the “specific reference” requirement of 35 U.S.C.119(e)(1) or 120, and it also complies with 37 CFR 1.78(a)(3) or (d)(3). Thus, a specific reference does not otherwise have to be made in the specification, such as in the first sentence(s) of the specification. If continuity data is included in an application data sheet, but not in the first sentence(s) of the specification, the continuity data for the patent front page will be taken from the application data sheet. No continuity data will be included in the first sentence(s) of the specification if applicant does not provide it there. Pre-AIA 37 CFR 1.76(b)(5) does not apply to provisional applications.

Foreign priority information includes the application number, country, and filing date of each foreign application for which priority is claimed, as well as any foreign application having a filing date before that of the application for which priority is claimed. Pre-AIA 37 CFR 1.76(b)(6) states that 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. The patent statute, 35 U.S.C. 119(b), does not require that a claim to the benefit of a prior foreign application take any particular form. Pre-AIA 37 CFR 1.76(b)(6) does not apply to provisional applications.

Pre-AIA 37 CFR 1.76(b)(7) provides that the assignee information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. The inclusion of this information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information in the application data sheet is considered a request to include such information on the patent application publication, since there is no other reason for including such information in the application data sheet. Assignment information must be recorded to have legal effect.

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. See pre-AIA 37 CFR 1.76(c)(1). A supplemental data sheet cannot be used to correct the following: (1) inventorship changes (37 CFR 1.48); (2) correspondence changes (pre-AIA 37 CFR 1.33(a)); and (3) citizenship changes (pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67). Supplemental application data sheets must be titled “Supplemental Application Data Sheet” and also contain all of the seven section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading. Supplemental application data sheets identifying only the information that is being changed (added, deleted, or modified) in the supplemental ADS are not acceptable. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and does not comply with pre-AIA 37 CFR 1.76. If no ADS was originally filed, but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even though it is the first-filed ADS, must be titled “Supplemental Application Data Sheet.”

II. SUPPLEMENTAL ADS SUBMISSIONS

For applications filed before September 16, 2012, when submitting an application data sheet after the initial filing of the application to correct, modify, or augment the application data sheet that was submitted with the application papers on filing, the following applies:

• (A) the supplemental application data sheet must be titled “Supplemental Application Data Sheet” (while the title “Supplemental Application Data Sheet” is preferred, “Supp. ADS” , “Supplemental ADS” or other variations thereof will be accepted);
• (B) the supplemental application data sheet must be a full replacement copy of the original ADS, if any, with each of the seven section headings listed in pre-AIA 37 CFR 1.76(b), and with all appropriate data for the section heading;
• (C) the supplemental application data sheet must be submitted with all changes indicated, preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets; and
• (D) the supplemental application data sheet must be signed as it is a paper and/or amendment filed in the application (see pre-AIA 37 CFR 1.33(b) and 37 CFR 11.18).

Any ADS submitted after the filing date of the application is a supplemental ADS, regardless of whether an original ADS was submitted with the application papers on filing. A supplemental ADS that is being used to correct data shown in an oath or declaration, such as foreign priority or residence information for an inventor, would show the original incorrect information with strike-through or brackets, and the new information with underlining, as if an ADS had originally been used to submit the information. For example, if the original oath or declaration included a foreign priority claim, in order to delete the foreign priority claim, applicant should provide a supplemental ADS showing the foreign priority claim with strike-through or brackets to ensure that the patent will reflect such change.

III. TREATMENT OF INCONSISTENT INFORMATION

Resolution of inconsistent information supplied by both an application data sheet and other documents (e.g., the oath or declaration under pre-AIA 37 CFR 1.63 , or pre-AIA 37 CFR 1.67) are addressed in pre-AIA 37 CFR 1.76 (d). 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. Pre-AIA 37 CFR 1.76(d)(1) provides that 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). This is because the application data sheet is intended as the means by which applicants will provide most information to the Office. In the small number of instances where another document has more accurate information than a concurrently supplied application data sheet (37 CFR 1.76(d)(2)), a supplemental application data sheet should be submitted to conform the information presented by the supplemental application data sheet with the correct information in the other document(s) (pre-AIA 37 CFR 1.76(d)(1)). The information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.

If an application is filed with an application data sheet improperly identifying the residence of one of the inventors, inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth the correct but different residence of inventor B, the Office will capture the residence of inventor B found in the application data sheet as the residence of B, and include that information in the filing receipt. If applicant desires correction of the residence, applicant should submit a supplemental application data sheet under pre-AIA 37 CFR 1.76(c), with the name of inventor B and the corrected residence for inventor B.

Pursuant to pre-AIA 37 CFR 1.76(d)(3), 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. If different inventors are listed in the application data sheet than are named in the oath or declaration for the application, the inventors, named in the oath or declaration, are considered to be the inventors named in the patent application. See pre-AIA 37 CFR 1.76(d)(3). Any change in the inventorship set forth in the oath or declaration under pre-AIA 37 CFR 1.63 must be by way of a request under AIA 37 CFR 1.48(a) notwithstanding identification of the correct inventive entity in an application data sheet or supplemental application data sheet. Similarly, if the oath or declaration under pre-AIA 37 CFR 1.63 incorrectly sets forth the citizenship of one of the inventors, that inventor must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 with the correct citizenship notwithstanding the correct identification of the citizenship in an application data sheet or supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).

The Office will rely upon information supplied in the application data sheet over an oath or declaration to capture the data even where the type of information supplied (citizenship, inventorship) is governed by the oath or declaration according to statute (pre-AIA 35 U.S.C. 115) or other rule (pre-AIA 37 CFR 1.41(a)(1)). Where the oath or declaration under 37 CFR 1.63 or pre-AIA 37 CFR 1.67 contains the correct information regarding inventors or their citizenship and the application data sheet does not, even though the oath or declaration governs pursuant to pre-AIA 37 CFR 1.76(d)(3), the information in the application data sheet must be corrected by submission of a request for correction and a supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).

If an application is filed with an application data sheet correctly setting forth the citizenship of inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth a different incorrect citizenship of inventor B, the Office will capture the citizenship of inventor B found in the application data sheet. Applicant, however, must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 by inventor B setting forth the correct citizenship even though it appears correctly in the application data sheet. A supplemental application data sheet cannot be used to correct the citizenship error in the oath or declaration. If, however, the error is one of residence, no change would be required (pre-AIA 37 CFR 1.76(d)(2)).

IV. ADDITIONAL INFORMATION

As to the submission of class/subclass information in the application data sheet, the Office notes that there is a distinction between permitting applicants to aid in the identification of the appropriate Art Unit to examine the application and requiring the Office to always honor such identification/request, which could lead to misuse by some applicants of forum shopping. Even when an applicant’s identification of an Art Unit is appropriate, internal staffing/workload requirements may dictate that the application be handled by another Art Unit qualified to do so, particularly when the art or claims encompass the areas of expertise of more than one Art Unit.

If the applicant is not an inventor, the applicant information should also include the applicant’s authority to apply for the patent on behalf of the inventor (see pre-AIA 37 CFR 1.42, 1.43 and 1.47). For example, if the inventor is deceased or legally incapacitated, the applicant should include “Legal Representative” as the authority. Similarly, if a petition under pre-AIA 37 CFR 1.47(b) is filed, the applicant’s authority would be “Party in Interest under 35 U.S.C. 118.” If the application is filed by the Administrator of NASA, the applicant’s authority would be “Government Property Interest.”

The correspondence information may be indicated by reference to a Customer Number to which correspondence is to be directed.

Effective December 18, 2013 for all applications no matter when filed, 37 CFR 1.76 was amended by adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76. See MPEP § 601.05(a), subsection IV, for more information.