postheadericon AIA Implementation – 09-16-2012 (cont…)

IPconnect: from the Expert's QuillSecond in a series on the AIA Implementation: Application Data Sheet

The old ADS and the new ADS are very similar. The differences are:

1.            The section title “Applicant Information” has been changed to “Inventor Information” and the citizenship of the inventors is no longer necessary.

2.            A new section has been inserted after the Foreign Priority Information section entitled “Authorization to Permit Access.”

3.            The section title “Assignee Information” has been changed to “Applicant Information” and additional options have been included.

General Comments

Under the new rules, an ADS is mandatory in almost all patent applications filed on or after September 16, 2012. ADS’s don’t need to be filed when an application has no priority claim (foreign or domestic) and the applicant is the inventor. However, the Best Practice is to file an ADS for all non-provisional applications. Also, even though ADS’s are not required to be filed with Provisional applications, I recommend that they be filed – it is easier to have one set of documents that are prepared for ALL applications rather than having to pick and choose for each type of application.

With regard to the form itself, as before, you don’t actually need to file the PTO-created ADS form. However, if you file an ADS that you have created and scanned into Acrobat for filing, the data must be hand-keyed into the Palm system by an employee at the PTO. This offers many opportunities for errors and omissions. When you use the PTO’s form and it is e-filed with the first submission when you file the application, then the bibliographic data will automatically be loaded into the Palm system and will be correct from that point forward (providing, of course, that the information on the ADS is correct).

Below is a discussion on each of the changes:

1.            The information entered in the Inventor Information section is basically the same as it was on the old form, except that you no longer need to provide the inventor’s citizenship. The new rules also include that the inventor’s address  no longer must be their residence address, but may be:
a.           the address where the inventor works;
b.           a post office box; or
c.           another address where mail is received by the inventor even if it is not the main mailing address of the inventor.


2.            Authorization To Permit Access – this is a new section where you can authorize access to the application by Participating Offices and replaces the old form. Previous to this, a separate form (PTO/SB39) had to be filed to provide the authorization for the access. Unless you are absolutely sure that this application will not be foreign filed, you should check this box. If this box is checked and foreign applications are filed in any of the applicable countries (Europe, Japan, So. Korea, PCT, plus others), then that office can send a request to the PTO directly for the priority document. This saves you from having to order the priority document and send it to the applicable office.

3.            The Applicant Information section. This section is causing a lot of confusion and problems. There are two separate considerations with this section:
a.            If the applicant is an entity other than the inventor(s), then this section must be completed. Note that the applicant must fit one of the below criteria:
i.              The assignee;
ii.             The inventor(s) legal representative (when the inventor is deceased or legally incapacitated;
iii.            A person (or entity) to whom the inventor is obligated to assign; or
iv.            A person (or entity) who shows sufficient proprietary interest in the invention.
If the Applicant is any of the above, then a Substitute Statement may be filed in lieu of a Declaration (check the rules! more on this in my next blog). The Statement must be signed by an authorized person of the Applicant (i.e., the Agent should not sign it). Be sure that the back-up information is in the file – i.e., a signed assignment, a signed employment agreement with an acknowledgement that all inventions must be assigned to the employer, a copy of the will appointing the legal representative, etc. You must be able to provide the back-up if it is requested by the PTO.
b.            If the applicant remains the inventors but an alternate entity should be published as the Assignee on the publication.

Unfortunately b. above is included in a separate section entitled “Non-Applicant Assignee Information” that is currently NOT on the ADS. Although the instructions for the new ADS include this section, the actual ADS does not. So, there are two methods to get this done:
i.              In the Applicant Information section, do NOT click in any of the radial circles (once you click it you cannot unclick it and a new ADS must be completed, which is very frustrating) but do enter the Assignee information. When the filing receipt is issued the Assignee will appear in both the Applicant(s) section and the Assignment for Published Patent Application section. If there is no problem if the Assignee is the applicant, then just leave it be. If the Applicant needs to be the inventor(s), then you need to file a Supplemental ADS to delete the Assignee as an applicant.
ii.             Leave the entire Applicant Information section blank and after you receive the OFR, file a Supplemental ADS requesting that the Assignee be added to the “Assignment for Published Patent Application” section.
Hopefully this error in the ADS will be corrected soon. In the meantime, we just have to do the best that we can.

A note on Supplemental ADS’s. The rules amend the requirements for filing a Supplemental ADS.  When you file a Supplemental ADS, you no longer need to provide ALL of the information – only the information that is changing needs to be provided. The document should be prepared in your word processor system and it should be formatted in the same fashion as a regular response (with the bibliographic information) and entitled SUPPLEMENTAL APPLICATION DATA SHEET. Just list the changes that need to be made. For example:

Please amend the application data sheet to correct the priority information as follows:

12/945,432 12/954,432 filed November 15, 2010

Don’t forget to have the attorney/agent sign it!

Thankfully the format in which the corrections need to be identified isn’t absolutely set, so as long as it is clear, there shouldn’t be any problems.

Remember, this isn’t legal advice and is provided only to assist in the prosecution of patent applications. The AIA is still being interpreted, so your attorney has the final say (of course).

Note that on November 30, 2012, a bill (HR 6621) was introduced in the US House of Representatives that makes technical changes to the AIA. Most of the changes deal with litigation, but there are some clarifications related to prosecution as well.

Stay tuned for my next blog on the impact of the AIA to non-attorney practitioners.

Have a wonderful holiday season!

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