USPTO - New Application Data Sheet Form for Submissions On or After November 30, 2015

The USPTO has a new Application Data Sheet (ADS) form PTO/AIA/14 for any ADS submission on or after November 30, 2015:

"The changes to the ADS form were announced in the Federal Register. See Changes to Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices; found on http://www.gpo.gov/fdsys/pkg/FR-2015-10-27/pdf/2015-27335.pdf Final Rule (October 27, 2015).

Applicants are no longer required to select an opt-in check box on the ADS form to provide the USPTO with authorization to permit a foreign intellectual property office participating in the priority document exchange (PDX) program access to a U.S. priority application. Instead, the revised ADS form contains by default the authorization to permit access to the U.S. priority application via the PDX program. Including a properly signed ADS form on filing will provide applicant’s authorization for the PDX program. Should applicant wish not to provide authorization for the PDX program, applicant can select the opt-out check box for this authorization on the ADS form. The revised ADS form also contains by default the authorization to permit access to the search results from a U.S. priority application by the European Patent Office (EPO). Like the PDX program, should applicant wish not to provide the EPO access to the search results, applicant can select the opt-out check box for this authorization on the ADS form.

Please note that a revised ADS form submitted after the filing of an application CANNOT be used to provide or revoke any of the authorizations to permit access discussed above. Instead, forms PTO/SB/39 and PTO/SB/69, as applicable, should be used to provide or revoke these authorizations to permit access after the filing of an application."

Copyright © 2015 Robert Moll. All rights reserved.

USPTO Updated ADS Form and Forms to Revive a Lapsed Patent or an Abandoned Application Under Patent Law Treaty

The Patent Law Treaty (PLT) entered into force in the United States on December 18, 2013. The PLT is a multilateral treaty to harmonize patent procedures, the form and content of patent applications, and legal representation. My first impression is that it generally helps applicants when they make mistakes.

For example, the USPTO recently notified me that they had new USPTO forms to implement PLT procedures to revive a lapsed patent or an abandoned application:

• Application Data Sheet (PTO/AIA/14)
• Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR 1.137(a) (PTO/SB/64)
• Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))(PTO/SB/64a)
• Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b)) (both PTO/SB/66 and SB/66-EFS-Web)

The USPTO says for help in submitting forms using the electronic filing system (EFS) call the patent electronic business center (EBC) from 6:00 am to 12:00 midnight (ET) Monday - Friday at 1-866-217-9197 or send an email to ebc@uspto.gov. For information on the forms, email patentpractice@uspto.gov.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - Updated Application Data Sheet Form

The America Invents Act (AIA) presented new AIA forms for US patent applications filed on and after September 16, 2012. Tonight, I will tackle just one and briefly because it is late-- the application data sheet (ADS) required under 37 CFR 1.76. What's an ADS? It is the bibliographic data of a US patent application including inventor, correspondence, application, representative, domestic benefit,  foreign priority and applicant information.

The ADS is lengthy and no fun to complete. But the USPTO promises if I complete an ADS it will reduce data input errors, and I guess transfer responsibility to me. I don't find this compelling, but the USPTO has a way to deal with my reluctance: 37 CFR 1.76(a) states a priority claim in a specification must be also stated in an ADS. Although a priority claim reduces patent term, it also reduces prior art so many applications eligible for continuing application status claim priority.

But the "form fun path" is just starting, since an ADS requires the name of the attorney of record. Initially when I completed an ADA, it appeared an attorney could no longer act in a representative capacity on a continuing application under 37 CFR 1.34. That appears to be no longer the case, but check for yourself as you may need to file a power of attorney form to be the attorney of record. If so, the person signing the power of attorney must prove authorization from the patent application owner. That requires a 37 CFR 3.73 statement of right stating the chain of title and the representative's qualifications.

The USPTO says it provides forms to assist the public, but making an optional form like the ADS mandatory per the new rules can generate unintended consequences -- like Obamacare.

In any event, the USPTO updated the Application Data Sheet (AIA/14) form on November 27, 2013. For assistance e-filing forms contact the Patent Electronic Business Center (EBC) at EBC@uspto.gov or call 1-866-217-9197 from 6:00 am to 12:00 midnight (ET) Monday through Friday. Also for more information on USPTO forms generally, send an email to patentpractice@uspto.gov.

Copyright © 2013 Robert Moll. All rights reserved.

America Invents Act - Making the Simple Act of Filing a Continuation Complex

A continuation is a patent application that is entitled to the benefit of the filing date of a prior application. The specification and drawings are the same but the claims are different. A continuation allows one to seek different claims to protect different aspects of the invention. Before the America Invents Act, filing a continuation was also relatively inexpensive. One simply copied the specification, added a sentence claiming priority, drafted claims, completed an application transmittal, calculated USPTO fees, and uploaded the application papers at the USPTO.

The America Invents Act has increased the expense of continuation applications filed after September 16, 2012 in that it requires an application data sheet (ADS) form, which was formerly optional, just to claim domestic or foreign priority. See 37 CFR 1.76 and 1.78. Adding to the chore if you file after the application is filed, the ADS form will not permit adding an application number, an attorney docket reference, or the title. You must apparently grab a typewriter or handwrite that information. But you still are not done, because the ADS requires filing an AIA power of attorney with no data field for the application number. Acting in a representative capacity under 37 CFR 1.34 is not an option in the form. What application does the power of attorney refer to? It refers to a statement under 37 CFR 3.73(c) for the application number. But this requires completing the statement, which requires gathering the notice of recordations in the chain of title. USPTO forms should save time, not generate the need to complete more forms! Further, the USPTO should amend 37 CFR 1.76 and 1.78 to be more consistent with Congressional law. There a claim to priority is only required to be contained in an application. These rules requiring priority claims be made in an "optional ADS form" generate filling out additional forms with little benefit to applicants.

Copyright © 2013 Robert Moll. All rights reserved.