601.05(a)   Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012 [R-11.2013]

[Editor Note: See MPEP § 601.05(b) for a discussion of the requirements of an ADS for applications filed before September 16, 2012.]

37 C.F.R. 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), 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, or 365. 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.
  • (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
    • (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, 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.
    • (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.
    • (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.
  • (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.
  • (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 the inconsistent information is supplied at the same time by a designation of correspondence address or the inventor's oath or declaration.
    • (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.

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), 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, or 365 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.

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). Note that the Office is not bound to print the suggested drawing figure, as the Office may decide to print another figure on the front page of any patent application publication or patent issuing from the application.

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.

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, or 365(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. 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, 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).

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(c) 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 applicant in the applicant information section. 37 CFR 1.46(c) also 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

37 CFR 1.76(c)  provides that an application data sheet provided on filing and an application data sheet submitted after the filing date of the application are both considered an application data sheet. 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 in an oath or declaration under 37 CFR 1.63 or 1.67. See 37 CFR 1.76(c)(1). An application data sheet submitted after filing the application may contain all of the seven section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading or only those sections containing changed or updated information. An application data sheet submitted after the filing of the application must identify the information that is being changed (added, deleted, or modified) in the application data sheet. If no ADS was originally filed, but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS must identify the information that is being changed (added, deleted, or modified) in the application.

An ADS that is being used to correct data shown in an oath or declaration, such as 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 ADS included a foreign priority claim, in order to delete the foreign priority claim, applicant must provide an ADS showing the foreign priority claim with strike-through or brackets to ensure that the patent will reflect such change.

37 CFR 1.76(c)(1)  provides that information in a previously submitted application data sheet, the 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 must comply with § 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).

37 CFR 1.76(c)(2)  provides that an application data sheet providing corrected or updated information may include all of the sections listed in § 1.76(b) or only those sections containing changed or updated information. 37 CFR 1.76(c)(2)  further provides that the application data sheet must include the section headings listed in § 1.76(b) 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.

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, or 37 CFR 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.

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 § 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. 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.

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.

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 compliance with 37 CFR 3.71  and 3.73, is required.

IV.   ADDITIONAL INFORMATION

The application data sheet form PTO/AIA/14 provides a section where applicants can make 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. 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).