Application Data Sheets And How They Help

An application data sheet (ADS) is a document that provides the bibliographic data for an application to the USPTO. The USPTO prefers, but does not require, the use of an ADS. An ADS can be advantageous, however, because it tends to reduce errors in the conversion/recordation of application data into the USPTO’s official electronic data record. While electronic filing via the USPTO’s EFS-Web has certainly reduced some errors, the USPTO relies on the uploaded documents (e.g., declaration, specification), rather than a user’s input, to create its official electronic record. For example, in a national stage application filed under 35 USC § 371, the USPTO might look to the publication of the international application for the title and to other documents for the listing of inventors and the correspondence address. The use of an ADS, because it provides this information in a single document and in a specified format, improves the accuracy of this conversion and the resulting electronic record.

Examples of What Can Happen Without an ADS
The USPTO’s procedures for converting the application data of paper applications and for recording electronic data into its official data record are surprisingly accurate, in view of the number of application data records it must create. Nonetheless, as with any system, errors do occur. And, even when they are remedied early in the prosecution process, they still take time and can cause processing delays. Worse yet, sometimes errors in the USPTO data records are not corrected. Consider the following U.S. patents, which could have benefited from an ADS:

And then there are:

Clearly, there are instances when an ADS would have helped the USPTO more accurately convert bibliographic information into an official data record.

The Requirements for an ADS
37 CFR § 1.76 governs application data sheets and sets forth specific requirements for each ADS. The following are some of the more noteworthy.

1. An ADS may be used in provisional and nonprovisional applications. 37 CFR § 1.37(a).

2. The USPTO offers a fillable pdf form (Form PTO/SB/14) on its website here. CAUTION – The USPTO ADS fillable form must be submitted as a text-based PDF file. A scanned version of the ADS fillable form will be rejected via EFS-Web because EFS-Web will not be able to auto-load scanned in data into backend systems. (Answer to USPTO.GOV EFS-Web Help FAQ # 252).

4. Providing domestic priority information in an ADS constitutes the specific reference required by 35 USC § 119(e) or 120, and 37 CFR §§ 1.78(a)(2) or 1.78(a)(5), such that this information need not otherwise be made part of the specification. 37 CFR 1.76 (b)(5).

5. The USPTO will interpret any blank section in an ADS to mean that there is no corresponding data for that label anywhere in the application. 37 CFR § 1.76(a).

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

7 thoughts on “ Application Data Sheets And How They Help ”

There’s one other great reason to use an ADS, which comes out of the last noted point (the fact that the ADS governs): If you want to retitle your continuation application, you can do so on the first application submission and without needing to put the title change in an amendment, even if the older application’s title is found at the top of the specification and in other other photocopied paperwork. This is because the ADS information controls where information conflicts. So, the ADS helps you save a step. All the best,
Robert K S

More hilarity:
Patents titled “Technical field”:
6,803,054 (actually for a dissolving drug tablet)
6,710,044 (actually for a pharmaceutical compound)
6,349,488 (actually for a vehicle-mounted trench-digging apparatus)
5,871,412 (actually for an automotive cooling assembly)
6,062,433 (actually for a dispenser nozzle) Couldn’t find any named “summary of the invention” or “abstract”… RKS

One well respected practitioner has voiced reservations about using an ADS. His concern is that by signing the ADS, you are certifying that all of the information is correct, including the inventor’s address and citizenship, both of which can be difficult to verify. This could lead to an inequitable conduct assertion if the patent was ever litigated and that information was shown to be false.

Also, MPEP Section 601 states: “If an application data sheet is used, data supplied in the application data sheet need not be provided elsewhere in the application except that the citizenship of each inventor must be provided in the oath or declaration even if this information is provided in the application data sheet.”

This is a difficult one. All of the benefits mentioned above are valuable. However, I have been also been told that by filing you are certifying that information is correct. Additionally I have been told there are a lot of guidelines to follow some of which the PTO’s form does not comply with (I cannot personally vouch for this as this is what another lawyer told me about the ADS and have not had time to check it out). So while I believe it has benefits I have been reluctant to use it.

@Robert K S and Pittsburgh Patent Lawyer: Re: “certifying,” the signature line of the UPSTO’s ADS form PTO/SB/14 refers to 37 C.F.R. 10.18. I don’t believe that 37 C.F.R. 10.18 should be read to impose more of an obligation than it expressly states. Particularly, I don’t believe that 37 C.F.R. 10.18 should be read as imposing an obligation to verify – that requirement is simply not in the express language of 37 C.F.R. 10.18.