2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP. Application Data Sheet & Corrected ADS

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1 Application Data Sheet & Corrected ADS

2 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 nonprovisional 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.

3 Where to locate an ADS ADSs may be obtained from the USPTO website at: or using the WEB tab in Patricia:

4 Header This information is self-explanatory

5 Secrecy Order Checkbox DO NOT check this box unless instructed to do so!!

6 Inventor Information 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

7 Correspondence Information 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

8 Application Information This information completes the headers: Complete based on attorney preference.

9 Publication Information One of these boxes should only be checked upon client/attorney direction Request NOT to publish is infrequently utilized.

10 Representative Information Be sure to enter the appropriate customer number. Some clients have their own customer number.

11 Domestic Benefit Example When filing a new application and claiming domestic priority, leave the FIRST Application Number (circled below) blank.

12 National Stage Information Example National Stage Information is entered under the same section as Domestic Benefit.

13 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).

14 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 BIRCH, STEWART, KOLASCH & BIRCH, LLP

15 Priority Information (cont.) 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

16 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

17 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.

18 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.

19 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/attorney direction! 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

20 Authorization to Permit Access 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

21 Authorization to Permit Access To maintain current procedures, the default will be to select only the second optout checkbox on the ADS, unless the client specifically instructs us to grant access

22 Applicant Information 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

23 Applicant Information Mailing Address

24 Non-Applicant Assignee Information

25 Signature Page 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

26 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.

27 Corrected ADS Any subsequent ADS filed after the first filed ADS

28 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

29 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 BIRCH, STEWART, KOLASCH & BIRCH, LLP

30 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)

31 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 BIRCH, STEWART, KOLASCH & BIRCH, LLP

32 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 BIRCH, STEWART, KOLASCH & BIRCH, LLP

33 Corrected ADS (AIA) Domestic Priority Manually enter updated priority information. Click the Add Add l Domestic Priority button to add additional rows.

34 QUESTIONS 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP