Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012

[Editor Note: See

MPEP § 601.05(b)

for a discussion

of the requirements of an ADS for applications filed before September 16, 2012.

37 CFR

1.76(b)(3)

, directed to reference filing under

37 CFR

1.57(a)

, is applicable only to patent applications filed

under

35

U.S.C. 111

on or after December 18, 2013. For

37 CFR

1.76(b)(3)

applicable to applications filed on or after

September 16, 2012 and before December 18, 2013, see

37 CFR 1.76 (2012-09-16

thru 2013-12-17)

; for applications filed prior to September

16, 2012, see

pre-AIA 37 CFR 1.76

as reproduced in

MPEP §

601.05(b)

.]

37 CFR 1.76 Application data sheet.

(a)

Application data sheet:

An application data sheet is a

sheet or sheets, that may be submitted in a provisional application under

35

U.S.C. 111(b)

, a nonprovisional application under

35

U.S.C. 111(a)

, a nonprovisional international design

application, or a national stage application under

35 U.S.C.

371

, and must be submitted when required by

§

1.55

or

1.78

to claim priority

to or the benefit of a prior-filed application under

35 U.S.C.

119

,

120

,

121

,

365

, or

386

. An application data

sheet must be titled "Application Data Sheet." An application data sheet

must contain all of the section headings listed in paragraph (b) of this

section, except as provided in paragraph (c)(2) of this section, with any

appropriate data for each section heading. If an application data sheet is

provided, the application data sheet is part of the application for which it

has been submitted.

ion data

sheet must be titled "Application Data Sheet." An application data sheet

must contain all of the section headings listed in paragraph (b) of this

section, except as provided in paragraph (c)(2) of this section, with any

appropriate data for each section heading. If an application data sheet is

provided, the application data sheet is part of the application for which it

has been submitted.

(b) Bibliographic data. Bibliographic data as

used in paragraph (a) of this section includes:

(1)

Inventor information.

This information includes the

legal name, residence, and mailing address of the inventor or each

joint inventor.

(2)

Correspondence information.

This information

includes the correspondence address, which may be indicated by

reference to a customer number, to which correspondence is to be

directed (see

§ 1.33(a)

).

(3)

Application information.

This information includes

the title of the invention, the total number of drawing sheets, a

suggested drawing figure for publication (in a nonprovisional

application), any docket number assigned to the application, the type

of application (e.g., utility, plant, design, reissue, provisional),

whether the application discloses any significant part of the subject

matter of an application under a secrecy order pursuant to

§

5.2

of this chapter (see

§

5.2(c)

), and, for plant applications, the Latin

name of the genus and species of the plant claimed, as well as the

variety denomination. When information concerning the previously filed

application is required under §

1.57(a)

, application information also includes

the reference to the previously filed application, indicating that the

specification and any drawings of the application are replaced by the

reference to the previously filed application, and specifying the

previously filed application by application number, filing date, and

the intellectual property authority or country in which the previously

filed application was filed.

nformation also includes

the reference to the previously filed application, indicating that the

specification and any drawings of the application are replaced by the

reference to the previously filed application, and specifying the

previously filed application by application number, filing date, and

the intellectual property authority or country in which the previously

filed application was filed.

(4)

Representative information.

This information

includes the registration number of each practitioner having a power

of attorney in the application (preferably by reference to a customer

number). Providing this information in the application data sheet does

not constitute a power of attorney in the application (see

§ 1.32

).

(5)

Domestic benefit information.

This information

includes the application 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

,

365(c)

, or

386(c)

. Providing this information in the

application data sheet constitutes the specific reference required by

35 U.S.C. 119(e)

or

120

, and

§

1.78

.

(6)

Foreign priority information.

This information

includes the application number, country (or intellectual property

authority), and filing date of each foreign application for which

priority is claimed. 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

.

(7)

Applicant information:

This information includes

the name (either natural person or juristic entity) and address of the

legal representative, assignee, person to whom the inventor is under

an obligation to assign the invention, or person who otherwise shows

sufficient proprietary interest in the matter who is the applicant

under

§ 1.43

or

§ 1.46

. Providing

assignment information in the application data sheet does not

substitute for compliance with any requirement of part 3 of this

chapter to have an assignment recorded by the Office.

, assignee, person to whom the inventor is under

an obligation to assign the invention, or person who otherwise shows

sufficient proprietary interest in the matter who is the applicant

under

§ 1.43

or

§ 1.46

. Providing

assignment information in the application data sheet does not

substitute for compliance with any requirement of part 3 of this

chapter to have an assignment recorded by the Office.

(c) Correcting and updating an application data

sheet.

(1) Information in a previously submitted

application data sheet, inventor's oath or declaration under

§ 1.63

,

§ 1.64

or

§ 1.67

, or

otherwise of record, may be corrected or updated until payment of the

issue fee by a new application data sheet providing corrected or

updated information, except that inventorship changes must comply with

the requirements of

§ 1.48

, foreign

priority and domestic benefit information changes must comply with

§§ 1.55

and

1.78

, and

correspondence address changes are governed by

§

1.33(a)

.

(2) An application data sheet providing

corrected or updated information may include all of the sections

listed in paragraph (b) of this section or only those sections

containing changed or updated information. The application data sheet

must include the section headings listed in paragraph (b) of this

section for each section included in the application data sheet, and

must identify the information that is being changed, with underlining

for insertions, and strike-through or brackets for text removed,

except that identification of information being changed is not

required for an application data sheet included with an initial

submission under

35 U.S.C. 371

.

ings listed in paragraph (b) of this

section for each section included in the application data sheet, and

must identify the information that is being changed, with underlining

for insertions, and strike-through or brackets for text removed,

except that identification of information being changed is not

required for an application data sheet included with an initial

submission under

35 U.S.C. 371

.

(d)

Inconsistencies between application data sheet and other

documents.

For inconsistencies between information that is

supplied by both an application data sheet under this section and other

documents:

(1) The most recent submission will govern

with respect to inconsistencies as between the information provided in

an application data sheet, a designation of a correspondence address,

or by the inventor's oath or declaration, except that:

(i) The most recent application data

sheet will govern with respect to foreign priority

(

§ 1.55

) or

domestic benefit (

§ 1.78

)

claims; and

(ii) The naming of the inventorship is

governed by

§ 1.41

and

changes to inventorship or the names of the inventors is

governed by

§ 1.48

.

(2) The information in the application data

sheet will govern when inconsistent with the information supplied at

the same time by a designation of correspondence address or the

inventor's oath or declaration. The information in the application

data sheet will 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.

n in the application

data sheet will 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.

(3) The Office will capture bibliographic

information from the application data sheet. The Office will generally

not review the inventor's oath or declaration to determine if the

bibliographic information contained therein is consistent with the

bibliographic information provided in an application data sheet.

Incorrect bibliographic information contained in an application data

sheet may be corrected as provided in paragraph (c)(1) of this

section.

(e)

Signature requirement.

An application data sheet must be

signed in compliance with

§ 1.33(b)

. An unsigned

application data sheet will be treated only as a transmittal letter.

(f)

Patent Law Treaty Model International Forms.

The

requirement in

§ 1.55

or

§

1.78

for the presentation of a priority or benefit

claim under

35 U.S.C. 119

,

120

,

121

, or

365

in an application data sheet will be satisfied by

the presentation of such priority or benefit claim in the Patent Law Treaty

Model International Request Form, and the requirement in

§

1.57(a)

for a reference to the previously filed

application in an application data sheet will be satisfied by the

presentation of such reference to the previously filed application in the

Patent Law Treaty Model International Request Form. The requirement in

§

1.46

for the presentation of the name of the applicant

under

35 U.S.C

Law Treaty

Model International Request Form, and the requirement in

§

1.57(a)

for a reference to the previously filed

application in an application data sheet will be satisfied by the

presentation of such reference to the previously filed application in the

Patent Law Treaty Model International Request Form. The requirement in

§

1.46

for the presentation of the name of the applicant

under

35 U.S.C. 118

in an application data sheet will be

satisfied by the presentation of the name of the applicant in the 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, as applicable.

(g)

Patent Cooperation Treaty Request Form.

The requirement

in

§

1.78

for the presentation of a benefit claim under

35

U.S.C. 119

,

120

,

121

, or

365

in an application

data sheet will be satisfied in a national stage application under

35

U.S.C. 371

by the presentation of such benefit claim

in the Patent Cooperation Treaty Request Form contained in the international

application or the presence of such benefit claim on the front page of the

publication of the international application under

PCT Article

21(2)

. The requirement in

§

1.55

or

§ 1.78

for the

presentation of a priority or benefit claim under

35 U.S.C.

119

,

120

,

121

, or

365

in an application

data sheet and the requirement in

§ 1.46

for the

presentation of the name of the applicant under

35 U.S.C.

118

in an application data sheet will be satisfied in

an application under

35 U.S.C. 111

by the

presentation of such priority or benefit claim and presentation of the name

of the applicant in a Patent Cooperation Treaty Request Form. If a Patent

Cooperation Treaty Request Form is submitted in an application under

35 U.S.C. 111

, the Patent Cooperation Treaty Request

Form must be accompanied by a clear indication that treatment of the

application as an application under

35 U.S.C.

111

is desired

esentation of such priority or benefit claim and presentation of the name

of the applicant in a Patent Cooperation Treaty Request Form. If a Patent

Cooperation Treaty Request Form is submitted in an application under

35 U.S.C. 111

, the Patent Cooperation Treaty Request

Form must be accompanied by a clear indication that treatment of the

application as an application under

35 U.S.C.

111

is desired.

37 CFR

1.76(a)

provides that an application data sheet may be

submitted in a provisional application under

35 U.S.C. 111(b)

, a

nonprovisional application under

35 U.S.C. 111(a)

, a

nonprovisional international design application, or a national stage application

under

35 U.S.C.

371

. However,

37 CFR 1.76(a)

also provides that

an application data sheet

must

be submitted when required by

37 CFR

1.55

and

1.78

to claim priority to, or the

benefit of, a prior-filed application under

35 U.S.C. 119

,

120

,

121

,

365

, or

386

in accordance with

37 CFR 1.55

and

1.78

. An

application data sheet

must

also be submitted in accordance with

37 CFR

1.46

when an application is filed by an assignee, a person to

whom the inventor is under an obligation to assign the invention, or a person who

otherwise shows a sufficient proprietary interest in the matter under

35 U.S.C.

118

.

I.

BIBLIOGRAPHIC INFORMATION

37 CFR

1.76(a)

requires that any ADS contain the seven headings

listed in

37

CFR 1.76(b)

with any appropriate data for each section

heading (except as provided in

37 CFR 1.76(c)(2)

for an ADS

providing corrected or updated information). The ADS must be titled “Application

Data Sheet” and any heading that does not contain any corresponding data will be

interpreted by the Office to mean that there is no corresponding data for that

heading anywhere in the application. Bibliographic data under

37 CFR

1.76(b)

includes: (1) inventor information; (2)

correspondence information; (3) application information; (4) representative

information; (5) domestic benefit information; (6) foreign priority information;

and (7) applicant information

ding data will be

interpreted by the Office to mean that there is no corresponding data for that

heading anywhere in the application. Bibliographic data under

37 CFR

1.76(b)

includes: (1) inventor information; (2)

correspondence information; (3) application information; (4) representative

information; (5) domestic benefit information; (6) foreign priority information;

and (7) applicant information.

Inventor information includes the legal name,

residence, and mailing address of each inventor (

37 CFR

1.41(b)

). Whether or not the inventor is the applicant, the

Office will to continue to use the inventor’s name for application and patent

identification purposes. Inventor names tend to provide a more distinct

identification than assignee name, for example. The “mailing address” is the

address where the inventor 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

37 CFR

1.33(a)

).

As set forth in

37 CFR

1.76(b)(3)

, application information includes the title of

the invention, 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). The Office now uses the drawing figure suggested by the applicant

for the front page of the patent application publication when the suggestion is

included on a compliant ADS timely filed before the process of publishing the

application begins. However, the Office continues not to be bound by the

applicant’s figure suggestion, and failure to use the suggested figure for the

first page of the patent application publication will not be considered a material

mistake for purposes of corrected publication under

37 CFR

1.221(b)

. See Applicant-Suggested Drawing Figure in the

Publication of Patent Applications, 1514 OG 107 (September 5, 2023)

. However, the Office continues not to be bound by the

applicant’s figure suggestion, and failure to use the suggested figure for the

first page of the patent application publication will not be considered a material

mistake for purposes of corrected publication under

37 CFR

1.221(b)

. See Applicant-Suggested Drawing Figure in the

Publication of Patent Applications, 1514 OG 107 (September 5, 2023).

Application information 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)

.

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 of the genus and species 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.

For applications filed on or after December 18,

2013, when information concerning the previously filed application is required

under

37 CFR

1.57(a)

, application information also includes the reference

to the previously filed application, indicating that the specification and any

drawings of the application are replaced by the reference to the previously filed

application, and specifying the previously filed application by application

number, filing date, and the intellectual property authority or country in which

the previously filed application was filed

information also includes the reference

to the previously filed application, indicating that the specification and any

drawings of the application are replaced by the reference to the previously filed

application, and specifying the previously filed application by application

number, filing date, and the intellectual property authority or country in which

the previously filed application was filed. Effective December 18, 2013,

37 CFR

1.57

and

37 CFR 1.76(b)(3)

were amended

to implement the reference filing provisions of

35 U.S.C.

111(c)

.

37 CFR 1.57(a)

now provides

that, subject to the conditions and requirements of

37 CFR

1.57(a)

, a reference to a previously filed application, made

in the English language in an ADS in accordance with

37 CFR

1.76

upon the filing of an application under

35

U.S.C. 111(a)

indicating that the specification and any

drawings of the application under

35 U.S.C. 111(a)

are replaced

by the reference to the previously filed application, shall constitute the

specification and any drawings of the application under

35 U.S.C.

111(a)

for purposes of a filing date under

37 CFR

1.53(b)

. Thus, applicants filing by reference under

35

U.S.C. 111(c)

and

37 CFR 1.57

should take care

to ensure that the application number, filing date, and intellectual property

authority or country of the previously filed application are accurately specified

on the ADS as the specification and drawings of the application specified on the

ADS is the specification and drawings of the application being filed by reference

under

35

U.S.C. 111(c)

and

37 CFR 1.57

. See

MPEP §

601.01(a)

, subsection III, for more information on

reference filing. The reference to a previously filed application in an ADS under

37 CFR

1.57(a)

is not

sufficient to establish a priority or

benefit claim

to that previously filed application

tion specified on the

ADS is the specification and drawings of the application being filed by reference

under

35

U.S.C. 111(c)

and

37 CFR 1.57

. See

MPEP §

601.01(a)

, subsection III, for more information on

reference filing. The reference to a previously filed application in an ADS under

37 CFR

1.57(a)

is not

sufficient to establish a priority or

benefit claim

to that previously filed application. Applicants must

still provide priority and/or benefit information under the domestic benefit

information heading or foreign priority information heading, as appropriate, in

the application data sheet even if utilizing the reference filing provisions of

35

U.S.C. 111(c)

and

37 CFR 1.57(a)

.

Representative information includes the registration

number of each practitioner appointed with a power of attorney in the application

(preferably by reference to a customer number).

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

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 benefit 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

,

365(c)

, or

386(c)

. The application data sheet, if provided, is

considered part of the application.

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

, and

37 CFR 1.78

. A specific

reference to the earlier application(s) is no longer required to be made in the

specification, such as in the first sentence(s) thereof. The continuity data for

the patent front page will be taken from the application data sheet

states that

providing this information in the application data sheet constitutes the specific

reference required by

35 U.S.C. 119(e)

or

120

, and

37 CFR 1.78

. A specific

reference to the earlier application(s) is no longer required to be made in the

specification, such as in the first sentence(s) thereof. 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, unless

applicant separately provides it there.

37 CFR 1.76(b)(5)

does not

apply to provisional applications.

Foreign priority information includes the

application number, country (or intellectual property authority), and filing date

of each foreign application for which priority is claimed.

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

.

37 CFR

1.76(b)(6)

does not apply to provisional applications.

37 CFR

1.76(b)(7)

provides that applicant information includes the

name (either natural person or juristic entity) and address of the applicant under

37 CFR

1.43

or

1.46

. Thus,

37 CFR

1.76(b)(7)

provides for the situation in which the applicant

is a person other than the inventor under

37 CFR 1.43

(legal

representative) or

37 CFR 1.46

(assignee, person

to whom the inventor is under an obligation to assign the invention, or person who

otherwise shows sufficient proprietary interest in the matter). This heading

should be left blank if the applicant is the inventor or is the remaining joint

inventor or inventors (

37 CFR 1.45

)

he applicant

is a person other than the inventor under

37 CFR 1.43

(legal

representative) or

37 CFR 1.46

(assignee, person

to whom the inventor is under an obligation to assign the invention, or person who

otherwise shows sufficient proprietary interest in the matter). This heading

should be left blank if the applicant is the inventor or is the remaining joint

inventor or inventors (

37 CFR 1.45

).

37 CFR

1.46(b)

provides that if an application is filed by the

assignee, a person to whom the inventor is under an obligation to assign the

invention, or a person who otherwise shows sufficient proprietary interest in the

matter, the application must contain an application data sheet under

37 CFR

1.76

specifying the assignee, person to whom the inventor is

under an obligation to assign the invention, or person who otherwise shows

sufficient proprietary interest in the matter in the applicant information

section.

37 CFR 1.46(b)

also requires

if an application entering the national stage under

35 U.S.C.

371

, or a nonprovisional international design application,

is applied for by a person other than the inventor under

37 CFR

1.46(a)

, the assignee, person to whom the inventor is under

an obligation to assign the invention, or person who otherwise shows sufficient

proprietary interest in the matter must have been identified as the applicant for

the United States in the international stage of the international application or

as the applicant in the publication of the international registration under Hague

Agreement Article 10(3).

37 CFR 1.46(c)(1)

provides

that any request to correct or update the name of the applicant must include an

application data sheet under

37 CFR 1.76

specifying the

corrected or updated name of the applicant in the applicant information section in

accordance with

37 CFR 1.76(c)(2)

plication or

as the applicant in the publication of the international registration under Hague

Agreement Article 10(3).

37 CFR 1.46(c)(1)

provides

that any request to correct or update the name of the applicant must include an

application data sheet under

37 CFR 1.76

specifying the

corrected or updated name of the applicant in the applicant information section in

accordance with

37 CFR 1.76(c)(2)

.

37

CFR 1.46(c)(1)

also provides that a change in the name of

the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be

effective to change the name of the applicant in a nonprovisional international

design application.

37 CFR 1.46(c)(2)

provides

that any request to change the applicant must include an application data sheet

under

37 CFR

1.76

specifying the applicant in the applicant information

section and comply with

37 CFR 3.71

and

3.73

. The application data sheet must comply with the

provisions for correcting and updating an application data sheet set forth in

37 CFR

1.76(c)

.

37 CFR 1.76(b)(7)

explains

that providing assignment 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. Assignment information must be recorded to have

legal effect.

II.

CORRECTING AND UPDATING AN ADS OR INFORMATION OTHERWISE OF RECORD

37 CFR

1.76(c)

provides the procedure for correcting and updating

not only an application data sheet (ADS), but also information otherwise of record

(e.g., information provided on the most recent filing receipt). Any ADS filed

after the filing date of the application or the submission of a first ADS is

considered a corrected (or updated) ADS even if an ADS was not previously

submitted. Such a corrected ADS must identify the information that is being

changed with underlining for insertions and strike-through or brackets for text

removed, except that identification of information being changed is not required

for an ADS included with an initial submission under

35 U.S.C.

371

ion of a first ADS is

considered a corrected (or updated) ADS even if an ADS was not previously

submitted. Such a corrected ADS must identify the information that is being

changed with underlining for insertions and strike-through or brackets for text

removed, except that identification of information being changed is not required

for an ADS included with an initial submission under

35 U.S.C.

371

. In general, the identification of the information being

changed should be made relative to the most recent filing receipt. If appropriate,

use of the corrected Web-based ADS is recommended because it will pre-populate

with information of record. Accordingly, applicants can type in the desired

changes in the corrected Web-based ADS, and the system will create a PDF version

with the appropriate strike-through and underlining. A corrected Web-based ADS,

however, is not permitted in international applications, national stage

applications under

35 U.S.C. 371

, provisional

applications, plant applications, reexamination proceedings, and supplemental

examinations under

35 U.S.C. 257

. For more

information, see the “Quick Start Guide for Corrected Web-based Application Data

Sheet (Corrected Web ADS)” available at

www.uspto.gov/patents/apply/patent-center

.

A corrected ADS may be submitted until payment of

the issue fee to either correct or update information in a previously submitted

application data sheet, or in an inventor’s oath or declaration under

37 CFR

1.63

,

1.64

, or

1.67

, or

otherwise of record. See

37 CFR 1.76(c)(1)

. Note,

however, a corrected ADS filed after final rejection or allowance is not entered

as a matter of right. See

37 CFR 1.116

or

1.312

, respectively. For a discussion of amendments and

other replies after final rejection or action, see

MPEP § 714.12

and

§

714.13

. For a discussion of amendments filed after

notice of allowance, see

MPEP § 714.16

7

, or

otherwise of record. See

37 CFR 1.76(c)(1)

. Note,

however, a corrected ADS filed after final rejection or allowance is not entered

as a matter of right. See

37 CFR 1.116

or

1.312

, respectively. For a discussion of amendments and

other replies after final rejection or action, see

MPEP § 714.12

and

§

714.13

. For a discussion of amendments filed after

notice of allowance, see

MPEP § 714.16

. In addition,

inventorship changes must comply with the requirements of

37 CFR 1.48

,

foreign priority and domestic benefit information changes must comply with

37 CFR

1.55

and

1.78

, and correspondence

address changes must comply with

37 CFR 1.33(a)

. Note also that

any request to correct or update the name of the applicant, or change the

applicant, must comply with

37 CFR 1.46(c)

.

A corrected ADS may include all of the section

headings listed in

37 CFR 1.76(b)

with all

appropriate data for each heading or only those sections (including the section

headings) containing changed or updated information. See

37 CFR

1.76(c)(2)

.

A corrected ADS should be filed with a request for a

corrected filing receipt unless accompanied by a request to take some other

action, such as a request under

37 CFR 1.48

, a request under

37

CFR 1.46(c)

, or the submission of a power of attorney. A

corrected ADS accompanying a request to change the applicant under

37

CFR 1.46(c)

must show the changes in applicant information

relative to the applicant information on the most recent filing receipt, even if

an ADS was not previously filed or an applicant was not previously identified in

an ADS because the filing receipt identifies the applicant information of record.

If no applicant was identified in the applicant information section of a properly

signed ADS filed with the application, a corrected ADS identifying a new applicant

with underlining does not need to show the deletion of the inventor-applicant(s)

with strikethrough

iled or an applicant was not previously identified in

an ADS because the filing receipt identifies the applicant information of record.

If no applicant was identified in the applicant information section of a properly

signed ADS filed with the application, a corrected ADS identifying a new applicant

with underlining does not need to show the deletion of the inventor-applicant(s)

with strikethrough. A corrected ADS submitted to correct information provided in

the inventor’s oath or declaration, such as residence information for an inventor,

must show the original incorrect information with strike-through or brackets, and

the new information with underlining, as if the incorrect information was

submitted in an ADS filed with the application even though an ADS was not

previously filed. If there are multiple inventors, all of the inventors must be

listed in the “Inventor Information” section of the corrected ADS, even if the

residence information is only being changed for one of the inventors.

If submitted during the time period for making a

benefit or priority claim set forth in

37 CFR 1.78

or

1.55

, a request for corrected filing receipt should be

filed with a corrected ADS to correct domestic benefit or foreign priority claim

information. A petition for an unintentionally delayed claim under

37 CFR

1.78(c) or

(e)

or

37 CFR 1.55(e)

may be required

if the domestic benefit or foreign priority claim is being submitted outside the

time period for making a benefit or priority claim. Where the most recent filing

receipt does not include a benefit claim or priority claim, either because a

previously submitted ADS failed to comply with

37 CFR

1.78

or

1.55

or the claim was not

previously included in an ADS, a corrected ADS submitted to add the benefit or

priority claim must identify the addition of the benefit claim or priority claim

with underlining relative to the most recent filing receipt (i.e., the entire

benefit or priority claim must be underlined)

rity claim, either because a

previously submitted ADS failed to comply with

37 CFR

1.78

or

1.55

or the claim was not

previously included in an ADS, a corrected ADS submitted to add the benefit or

priority claim must identify the addition of the benefit claim or priority claim

with underlining relative to the most recent filing receipt (i.e., the entire

benefit or priority claim must be underlined). For example, if an ADS included a

benefit claim but the relationship between the instant application and the parent

application was not provided, and the most recent filing receipt for the

application shows no benefit claim, the entire benefit claim must be shown with

underlining in the corrected ADS. In addition, if the ADS identified an incorrect

benefit claim (e.g., “division of” instead of “continuation of”) and the most

recent filing receipt included the incorrect benefit claim, the corrected ADS

should identify the information being deleted (e.g., “division of”) with

strike-through or brackets, and should identify the information being added (e.g.,

“continuation of”) with underlining. In the rare circumstance where a domestic

benefit or a priority claim is being deleted, applicant must provide a corrected

ADS identifying the deletion of the foreign priority claim with strike-through or

brackets. Before deleting a domestic benefit claim or a foreign priority claim,

applicant should consider the status of the application since an amendment or ADS

filed after final rejection or allowance is not entered as a matter of right and

must be filed in compliance with

37 CFR 1.116

or

1.312

, respectively. Applicants are cautioned that new

prior art may be available as a result of deleting the claim. Also, deleting a

benefit or priority claim may be considered a showing that the applicant is

intentionally waiving the benefit claim or priority claim to the prior application

in the instant application. See

MPEP §

211.02(a)

, subsection III.

III

in compliance with

37 CFR 1.116

or

1.312

, respectively. Applicants are cautioned that new

prior art may be available as a result of deleting the claim. Also, deleting a

benefit or priority claim may be considered a showing that the applicant is

intentionally waiving the benefit claim or priority claim to the prior application

in the instant application. See

MPEP §

211.02(a)

, subsection III.

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

37 CFR

1.63

,

1.64

, or

1.67

)

are addressed in

37 CFR 1.76(d)

.

37 CFR

1.76(d)(1)

provides that the most recent submission will

govern (control) with respect to inconsistencies as between the information

provided in an application data sheet, a designation of a correspondence address,

or by the inventor’s oath or declaration, except that: (1) the most recent

application data sheet will govern with respect to foreign priority

(

37 CFR

1.55

) or domestic benefit (

37 CFR

1.78

) claims; and (2) the naming of the inventorship is

governed by

37 CFR 1.41

and changes to inventorship or the names of the

inventors is governed by

37 CFR 1.48

.

37 CFR

1.76(d)(2)

provides that the information in the application

data sheet will govern when the inconsistent information is supplied at the same

time by a designation of correspondence address or the inventor’s oath or

declaration. 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 ADS is inconsistent with the information

provided in another document that was submitted at the same time or prior to the

ADS submission, the ADS will control

y 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 ADS is inconsistent with the information

provided in another document that was submitted at the same time or prior to the

ADS submission, the ADS will control. This is because the application data sheet

is intended to be the means by which applicant provides complete bibliographic

information. 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 corrected application data sheet should be

submitted to conform the information in the ADS to the correct information as

provided in the other document(s).

37 CFR

1.76(d)(3)

provides that the Office will capture

bibliographic information from the application data sheet.

37 CFR

1.76(d)(3)

further provides that the Office will generally

not review the inventor’s oath or declaration to determine if the bibliographic

information contained therein is consistent with the bibliographic information

provided in an application data sheet.

37 CFR 1.76(d)(3)

further

provides that incorrect bibliographic information contained in an application data

sheet may be corrected as provided in

37 CFR 1.76(c)(1)

.

Examples:

If an application naming inventors A and B is

filed with an application data sheet that improperly identifies the residence

of inventor B and an executed

37 CFR 1.63

declaration

that properly identifies the residence of inventor B, the Office will capture

the residence information of inventor B as identified in the application data

sheet, and include that information in the filing receipt

xamples:

If an application naming inventors A and B is

filed with an application data sheet that improperly identifies the residence

of inventor B and an executed

37 CFR 1.63

declaration

that properly identifies the residence of inventor B, the Office will capture

the residence information of inventor B as identified in the application data

sheet, and include that information in the filing receipt. Applicant may

correct the residence information by submitting an application data sheet under

37 CFR

1.76(c)

with the name of inventor B and the corrected

residence for inventor B with underlining for insertions and strike-through or

brackets for text removed.

If an application is filed with an application data

sheet improperly identifying inventors A, B and C and an executed

37 CFR

1.63

declaration correctly setting forth the inventorship as

A and B, the Office will capture the inventorship as inventors A, B and C based on

the information in the application data sheet, and include that information in the

filing receipt. To correct the inventorship, applicant must submit a request to

correct the inventorship pursuant to

37 CFR 1.48

. See

MPEP §

602.01(c)

et seq.

If an application is filed with an application data

sheet, the Office will capture the applicant information as identified in the

application data sheet. To change the name of the applicant, a request in

accordance with

37 CFR 1.46(c)

, and in

compliance with

37 CFR 3.71

and

3.73

, is required. See

MPEP §

605.01

, subsection II.

IV.

ADDITIONAL INFORMATION

The application data sheet form PTO/AIA/14 provides

a section where applicants can make a request not to publish the application or a

request for early publication.

The application data sheet form PTO/AIA/14 provides

a section where applicants can provide an Authorization to Permit Access to the

Instant Application by Participating Offices

MPEP §

605.01

, subsection II.

IV.

ADDITIONAL INFORMATION

The application data sheet form PTO/AIA/14 provides

a section where applicants can make a request not to publish the application or a

request for early publication.

The application data sheet form PTO/AIA/14 provides

a section where applicants can provide an Authorization to Permit Access to the

Instant Application by Participating Offices. If the box in this section of the

form is checked, the Office has the authority to provide access to the instant

patent application to the participating offices in which a foreign application

claiming priority to the instant patent application is filed.

The application data sheet form PTO/AIA/14 provides

an assignee information section, which 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. Assignees who are the applicant will appear on the

patent application publication as the applicant and only need to separately

provide assignee information in the assignee information section if identification

as an assignee is also desired on the patent application publication.

37 CFR

1.76(e)

provides that an application data sheet must be

signed in compliance with

37 CFR 1.33(b)

. The rule

further provides that an unsigned application data sheet will be treated only as a

transmittal letter

nt and only need to separately

provide assignee information in the assignee information section if identification

as an assignee is also desired on the patent application publication.

37 CFR

1.76(e)

provides that an application data sheet must be

signed in compliance with

37 CFR 1.33(b)

. The rule

further provides that an unsigned application data sheet will be treated only as a

transmittal letter. Thus, an unsigned application data sheet will not be effective

to provide the name of the inventor for any invention claimed in the application

(

37 CFR

1.41(b)

), name as the applicant an assignee, obligated

assignee, or a person who otherwise shows sufficient propriety interest in the

application (

37 CFR 1.46

), make a claim to priority of a foreign

application (

37 CFR 1.55

), or make a claim to the benefit of a

prior-filed domestic application (

37 CFR 1.78

).

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

to provide certain

information. However, as provided in

37 CFR 1.76(d)(2)

, information

in an ADS will govern when inconsistent with the information supplied at any time

in such forms. Furthermore, if applicants want to postpone submission of the

inventor’s oath or declaration until after the time period set to complete the

application as provided in

37 CFR 1.53(f)(1) or (2)

, an

ADS that provides the inventor information is required. Accordingly, the use of an

ADS to supply application information is encouraged.

37 CFR

1.76(f)

provides that: (1) The requirement in

37 CFR

1.55

or

37 CFR 1.78

for the

presentation of a priority or benefit claim under

35 U.S.C

declaration until after the time period set to complete the

application as provided in

37 CFR 1.53(f)(1) or (2)

, an

ADS that provides the inventor information is required. Accordingly, the use of an

ADS to supply application information is encouraged.

37 CFR

1.76(f)

provides that: (1) The requirement in

37 CFR

1.55

or

37 CFR 1.78

for the

presentation of a priority or benefit claim under

35 U.S.C.

119

,

120

,

121

, or

365

in an application data sheet will be satisfied by the

presentation of such priority or benefit claim in the Patent Law Treaty Model

International Request Form; (2) the requirement in

37 CFR

1.57(a)

for a reference to the previously filed application

in an application data sheet will be satisfied by the presentation of such

reference to the previously filed application in the Patent Law Treaty Model

International Request Form; and (3) the requirement in

37 CFR

1.46

for the presentation of the name of the applicant under

35 U.S.C.

118

in an application data sheet will be satisfied by the

presentation of the name of the applicant in the 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, as

applicable.

37 CFR

1.76(g)

provides that the requirement in

37 CFR

1.78

for the presentation of a benefit claim under

35 U.S.C.

119

,

120

,

121

, or

365

in an application data sheet will be satisfied in a

national stage application under

35 U.S.C. 371

by the

presentation of such benefit claim in the Patent Cooperation Treaty Request Form

contained in the international application or the presence of such benefit claim

on the front page of the publication of the international application under

PCT Article

21(2)

er

35 U.S.C.

119

,

120

,

121

, or

365

in an application data sheet will be satisfied in a

national stage application under

35 U.S.C. 371

by the

presentation of such benefit claim in the Patent Cooperation Treaty Request Form

contained in the international application or the presence of such benefit claim

on the front page of the publication of the international application under

PCT Article

21(2)

.

37 CFR 1.76(g)

states ‘‘the

Patent Cooperation Treaty Request Form contained in the international

application’’ to make clear that the provision does not allow for that addition or

correction of benefit claim (or any other) information during the national stage

via the submission of a new Patent Cooperation Treaty Request Form. Applicants may

add or correct benefit claim (or any other) information during the national stage

via the submission of an application data sheet under

37 CFR

1.76

(assuming that the conditions and requirements for such

addition or correction are satisfied).

37 CFR

1.76(g)

provides for presence of such benefit claim on the

front page of the publication of the international application under

PCT Article

21(2)

to account for replacement sheets of the Patent

Cooperation Treaty Request Form that may not be forwarded to each national office

but that are reflected in the International Bureau’s publication of the

international application.

37 CFR 1.76(g)

does not

mention either the provisions in

37 CFR 1.55

for the

presentation of a priority claim under

35 U.S.C. 119

or

365

in an application data sheet or the provisions in

37 CFR

1.46

for the presentation of the name of the applicant under

35 U.S.C.

118

in an application data sheet with respect to a national

stage application under

35 U.S.C. 371

as this

information is taken from the WIPO records of the international application in a

national stage application under

35 U.S.C. 371

.

37 CFR

1.76(g)

also provides that the requirement in

37 CFR

1.55

or

37 CFR 1.78

for the

presentation of a priority or benefit claim under

35 U.S.C

t under

35 U.S.C.

118

in an application data sheet with respect to a national

stage application under

35 U.S.C. 371

as this

information is taken from the WIPO records of the international application in a

national stage application under

35 U.S.C. 371

.

37 CFR

1.76(g)

also provides that the requirement in

37 CFR

1.55

or

37 CFR 1.78

for the

presentation of a priority or benefit claim under

35 U.S.C.

119

,

120

,

121

, or

365

in an application data sheet and the requirement in

37 CFR

1.46

for the presentation of the name of the applicant under

35 U.S.C.

118

in an application data sheet will be satisfied in an

application under

35 U.S.C. 111

by the

presentation of such priority or benefit claim and presentation of the name of the

applicant in a Patent Cooperation Treaty Request Form.

37 CFR

1.76(g)

finally also provides that if a Patent Cooperation

Treaty Request Form is submitted in an application under

35 U.S.C.

111

, the Patent Cooperation Treaty Request Form must be

accompanied by a clear indication that treatment of the application as an

application under

35 U.S.C. 111

is desired.