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© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Application Data Sheet & Corrected ADS
What is an Application Data Sheet (ADS)?
• An ADS is a document providing detailed application information to the USPTO.
• It is the USPTO’s rule that an ADS must be filed in:– applications claiming priority; and
– provisionals when the Assignee is the Applicant.
• It is BSKB’s policy to submit an ADS with all new non-provisional applications (there exists a hidden benefit that if a fillable .pdf ADS is submitted, there is a decrease in USPTO errors).– With provisionals, we follow USPTO guidelines.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Where to locate an ADS
• ADSs may be obtained from the USPTO website at: http://www.uspto.gov/patent/patents-forms or using the “WEB” tab in Patricia:
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Header
This information is self-explanatory
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Secrecy Order Checkbox
DO NOT check this box unless instructed to do so!!
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Inventor Information
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Correspondence Information
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Application Information
• This information completes the headers:
Complete
based on
attorney
preference.
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Publication Information
One of these boxes should only be checked upon client/attorney direction
Request NOT to publish is infrequently utilized.
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Representative Information
Be sure to enter the appropriate customer number.Some clients have their own customer
number.
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Domestic Benefit Example
• When filing a new application and claiming domestic priority, leave the FIRST Application Number (circled below) blank.
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National Stage Information Example
• National Stage Information is entered under the same section as Domestic Benefit.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Foreign Priority Information
The DAS Access Code is provided by the client.Participating PDX Countries are: JP, EP, CN, KR and WO
The DAS Code is required for JP priority (for applications filed on or after 1 OCT 2017).
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Priority Information
• Per the USPTO:
The order of the applications should be listed beginning from the instant application and continuing through the list
of parents in reverse chronological order, meaning:
newest to oldest.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Priority Information (cont.)
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Priority Information IMPORTANT
• Take great care in entering the priority information, including requisite quality review.
• Errors in priority, if discovered after a certain time period, can only be fixed with a Petition.
• This Petition is very costly!
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Related Applications
Foreign applications that are “related” applications should be identified in the specification, NOT on the ADS.
The ADS should only list applications to which the current application claims priority.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Transitional Application Statement
• When filing an application and claiming priority to an application filed prior to March 16, 2013, flag this section for the attorney asking if this box should be checked.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Transitional Application Statement
• Transitional Application Statement
– The transitional statement check box enables us to indicate that there are claims to new subject matter in the existing application.
This box should only be checked upon client/attorneydirection!
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Authorization to Permit Access
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Authorization to Permit Access
To maintain current procedures, the default will be to select only the second “opt-
out” checkbox on the ADS, unless the client specifically instructs us to grant access
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Applicant Information
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Applicant InformationMailing Address
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Non-Applicant Assignee Information
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Signature Page
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Signature Requirement
• An ADS MUST be signed.• BSKB procedure is to have the ADS electronically signed
by the attorney/agent, so that the electronic fillable .pdf is uploaded to the USPTO.– By uploading the electronically signed fillable .pdf of the ADS, the
USPTO will capture the information from the upload. This has been seen to drastically decrease the number of USPTO errors associated with scanned .pdf ADS forms being uploaded.
• An unsigned ADS will be treated ONLY as a transmittal letter.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Corrected ADS
• Any subsequent ADS filed after the first filed ADS
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ADS Form
• Note that there are different ADS forms to make corrections for pre-AIA and AIA applications.
– Pre-AIA: Use PTO - Supplemental Application Data Sheet
– Post-AIA: Use PTO - AIA Application Data Sheet
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Correcting/Updating an ADS
• Information previously submitted (in an ADS, inventor’s oath or declaration, or otherwise of record) may be corrected or updated until payment of the issue fee by submitting a new ADS providing corrected or updated information.
– For Inventorship/Assignee changes, foreign priority and domestic benefit information changes, and correspondence address changes there are different rules to follow.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Corrected ADS (AIA)
• Only the application information and the sections containing changes or updates are required.
• Must include the section headings for each section included in the ADS.
• Must show changes using:– underlining for insertions, and – strike-through or brackets (for less than 5 characters) for
text being removed.• Identification of information being changed is not
required for an ADS included with an initial submission under 35 U.S.C. 371 (National Stage Application)
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Corrected ADS (AIA)Instructions to PTO
• Complete any instructions to the PTO:
– Look for instructions to the PTO immediately above
each section heading (e.g., “Please add/amend ____
as indicated”).
– Edit as needed to identify the specific data being
revised.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Corrected ADS (AIA)Multiple Names
• If the case has multiple inventors, applicants and/or non-applicant assignees:
– The entire section must be submitted.
– DO NOT delete the main SECTION HEADING (e.g., “Inventor Information”) unless you remove ALL inventors, applicants or non-applicant assignees from this section.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
Corrected ADS (AIA)Domestic Priority
• Manually enter updated priority information.Click the “Add Add’l Domestic Priority” button to add additional rows.
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP
QUESTIONS
© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP