Application Data Sheet (ADS) in Application Filed Before September 16, 2012
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USPTO MPEP › Chapter 0600 - Parts, Form, and Content of Application › MPEP § 601.05(b)
Text
[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.]
37 CFR 1.76 (pre-AIA) Application data sheet.
[Editor Note:
37 CFR 1.76
as reproduced
below includes the revisions to paragraph (d)(2) and the addition of paragraphs
(f) and (g) set forth in Changes to Implement the Patent Law Treaty, 78 FR
62368 (October 21, 2013)(final rule) as those provisions are applicable to
applications filed before September 16, 2012.]
(a)
Application data sheet.
An application data sheet is a
sheet or sheets, that may be voluntarily submitted in either provisional or
nonprovisional applications, which contains bibliographic data, arranged in
a format specified by the Office. An application data sheet must be titled
“Application Data Sheet” and must contain all of the section headings listed
in paragraph (b) 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 provisional or nonprovisional application for which it
has been submitted.
(b)
Bibliographic data.
Bibliographic data as used in
paragraph (a) of this section includes:
(1)
Applicant information.
This information includes
the name, residence, mailing address, and citizenship of each
applicant (
§ 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 (
§§
1.42
,
1.43
, and
1.47
) to apply for the patent on behalf of the
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)
).
iven name or
initial. If the applicant is not an inventor, this information also
includes the applicant’s authority (
§§
1.42
,
1.43
, and
1.47
) to apply for the patent on behalf of the
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, 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, 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. The suggested classification and Technology
Center information should be supplied for provisional applications
whether or not claims are present. If claims are not present in a
provisional application, the suggested classification and Technology
Center should be based upon the disclosure.
(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
).
lassification and Technology
Center should be based upon the disclosure.
(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 priority 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
, or
365(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(a)(2)
or
§ 1.78(a)(5)
, and
need not otherwise be made part of the specification.
(6)
Foreign priority information.
This information
includes the application number, country, 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(a)
.
(7)
Assignee information.
This information includes the
name (either person or juristic entity) and address of the assignee of
the entire right, title, and interest in an application. Providing
this 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.
5 U.S.C. 119(b)
and
§ 1.55(a)
.
(7)
Assignee information.
This information includes the
name (either person or juristic entity) and address of the assignee of
the entire right, title, and interest in an application. Providing
this 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)
Supplemental application data sheets.
Supplemental
application data sheets:
(1) May be subsequently supplied prior to
payment of the issue fee either to correct or update information in a
previously submitted application data sheet, or an oath or declaration
under
§ 1.63
or
§
1.67
, except that inventorship changes are
governed by
§ 1.48
,
correspondence changes are governed by
§
1.33(a)
, and citizenship changes are governed by
§
1.63
or
§ 1.67
; and
(2) Must be titled “Supplemental Application
Data Sheet,” include all of the section headings listed in paragraph
(b) of this section, include all appropriate data for each section
heading, and must identify the information that is being changed,
preferably with underlining for insertions, and strike-through or
brackets for text removed.
(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 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 a
§ 1.63
or
§
1.67
oath or declaration, except as provided by
paragraph (d)(3) of this section;
tween information that is
supplied by both an application data sheet under this section and other
documents.
(1) 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 a
§ 1.63
or
§
1.67
oath or declaration, except as provided by
paragraph (d)(3) of this section;
(2) The information in the application data
sheet will govern when the inconsistent information is supplied at the
same time by an amendment to the specification, a designation of
correspondence address, or a
§ 1.63
or
§
1.67
oath or declaration, except as provided by
paragraph (d)(3) of this section. 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.
(3) The oath or declaration under
§
1.63
or
§ 1.67
governs
inconsistencies with the application data sheet in the naming of
inventors (
§ 1.41(a)(1)
) and
setting forth their citizenship (
35 U.S.C.
115
);
(4) The Office will capture bibliographic
information from the application data sheet (notwithstanding whether
an oath or declaration governs the information). Thus, the Office
shall generally, for example, not look to an oath or declaration under
§
1.63
to see if the bibliographic information
contained therein is consistent with the bibliographic information
captured from an application data sheet (whether the oath or
declaration is submitted prior to or subsequent to the application
data sheet). Captured bibliographic information derived from an
application data sheet containing errors may be corrected if applicant
submits a request therefor and a supplemental application data
sheet
n
contained therein is consistent with the bibliographic information
captured from an application data sheet (whether the oath or
declaration is submitted prior to or subsequent to the application
data sheet). Captured bibliographic information derived from an
application data sheet containing errors may be corrected if applicant
submits a request therefor and a supplemental application data
sheet.
[Editor Note:
37 CFR 1.76(e)
is not
applicable to applications filed before September 16, 2012.]
(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. 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.
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.
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
ed by a clear indication that treatment of the
application as an application under
35 U.S.C.
111
is desired.
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)
ing 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. With regard to the suggested drawing figure, 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).
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
so 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
plication 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
s 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
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
)
mental 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)
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
esidence 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)
)
nder
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
mit 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
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.
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