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Application Data Sheet

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.

Submission of an application data sheet (ADS) should be routine for all applications but is required where: (i) submission of the inventor’s oath or declaration is to be delayed; (ii) each inventor’s oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors; (iii) there is a claim for domestic benefit (37 CFR 1.78), or foreign priority claim (37 CFR 1.55)(except foreign priority for national stage applications); or (iv) there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).

Although an ADS submitted with an application is part of the application, the use of an ADS to make a claim for domestic benefit or foreign priority is not an express incorporation by reference of the prior application into the subject application. An express incorporation by reference must be set forth in the specification of the subject application as filed.

(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.

A patent practitioner must sign the application data sheet for an assignee-applicant that is a juristic entity.

(c) Supplemental application data sheets. There is no Supplemental application data sheet any longer. Submit ADS with new information only using proper format with strikethrough deletions and underlined additions.

A corrected or updated ADS may include: All sections listed in § 1.76(b), or Only those section containing changed or updated information (§ 1.76(c)(2)):

All information in the section must be provided, with identification of what has changed in the section, except for an initial 35 U.S.C. 371 submission: Underling for insertions, strike-through or brackets for deletions.

The assignee and the second inventor should be listed in the “Applicant Information" section of the ADS as the applicant.

Assignee information can be included on the patent application publication even where the assignee is not the applicant. The current ADS form, PTO/AIA/14, does not have a field for providing non-applicant assignee information. The Office is in the process of revising the ADS form to provide an additional field for non-applicant assignee information for assignees who are not the applicant, but who want assignee information printed on the patent application publication. Until the revised ADS form is available, non-applicant assignee information may be provided on the application transmittal letter for the purpose of having the information printed on the patent application publication.

The petition under 37 CFR 1.46(b)(2) should be filed with the application. If the petition is not filed with the application, then the person who is alleging sufficient proprietary interest may not be considered the applicant. Instead, where no applicant is identified, the Office will, by default, consider the inventor to be the applicant (e.g., to complete processing of the application so it can be forwarded for examination). 37 CFR 1.46(c) provides that a request to change the applicant after an original applicant has been specified requires compliance with 37 CFR 3.71 and 3.73. A person alleging sufficient proprietary interest who later wants to become the applicant would not be able to comply with 37 CFR 3.71 and 3.73. In addition, any power of attorney must be signed by the applicant. If a petition has not been filed, then a person who allegedly has sufficient proprietary interest would not be able to sign a power of attorney.

No, the assignee-applicant would not need to file a new power of attorney so long as the power of attorney granted by the inventor-applicant remained. A new power of attorney from the assignee-applicant would need to be filed only if the power of attorney from the inventor was revoked.

The application number is required to be identified only where the paper is being submitted for a previously-filed application for a patent. The application information fields on the PTO/AIA/82A should be completed to the extent possible to clearly identify the application to which the form is being directed.

An assignee who is not an applicant must become the applicant under 37 C.F.R. 1.46(c) in order to revoke or appoint power of attorney.

Applicant: The information to be provided in this section is the name and address of the legal representative who is the applicant under 37 CFR 1.43; or the name and address of 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 who is the applicant under 37 CFR 1.46. If the applicant is an applicant under 37 CFR 1.46 (assignee, person to whom the inventor is obligated to assign, or person who otherwise shows sufficient proprietary interest) together with one or more joint inventors, then the joint inventor or inventors who are also the applicant should be identified in this section. A choice of Person who shows sufficient proprietary interest is available.

An ADS must be filed:

  1. To identify applicants who are not the inventor(s).

  2. To set the inventorship where an inventor’s oath or declaration is not being presented. This permits postponing the declaration until the application is otherwise in condition for allowance.

  3. To set the inventorship where there are joint inventors and each joint inventor is executing a declaration that only names that inventor and not all of the inventors.

  4. To make benefit claims under 37 CFR 1.78 and foreign priority claims under 37 CFR 1.55 (except applications entering the national stage under 35 U.S.C. 371).

Use newly-revised form PTO/AIA/14 (Revised 08/2012 – See Appendix for copy):

  1. Submit the fillable form via EFS-Web with the application. Doing so will cause the bibliographic data to automatically load into USPTO electronic systems. Scanning or printing as a pdf will cause USPTO staff to have to manually enter the data. Note: Only an ADS that is submitted with the application via EFS-Web upon filing will automatically load into the Office’s electronic systems. Use of the fillable ADS subsequent to filing will not result in an automatic upload and will require USPTO staff to manually input the information.

  2. The newly-revised ADS includes a new Applicant information section to identify non-inventor applicants. Note: Where the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded in the assignment records no later than payment of the issue fee. (37 CFR 1.46(b)(1))

  3. Where the applicant is a juristic entity the ADS may only be signed by a patent practitioner. For other applicants, the ADS may be signed by either the applicant or a patent practitioner. (37 CFR 1.33(b))

  4. All benefit claims under 37 CFR 1.78, and foreign priority claims under 37 CFR 1.55, must be set forth in an ADS. For applications entering the national stage under 35 U.S.C. 371, foreign priority claims are not required to be set forth in the ADS. Foreign priority claims in these applications must have been timely made in the international phase in the PCT request form or in a notice from applicant.

  5. There is no longer a “supplemental" ADS. Information may be corrected or updated by filing a new ADS that contains only the sections containing changed or updated information. Changes must be shown by underlining for insertions and strikethrough or brackets for deletions. Each section containing changed or updated information must contain all of the information already of record with the changes shown by markings.

http://www.uspto.gov/aia_implementation/faqs_inventors_oath.jsp#heading-1

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