The attorney’s or agent’s full mailing address (including ZIP Code) must be given in every power of attorney. The telephone and fax numbers of the attorney or agent should also be included in the power of attorney. The prompt delivery of communications will thereby be facilitated.
See MPEP § 402.02(a) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed on or after September 16, 2012. See MPEP § 402.02(b) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed before September 16, 2012.
An application must specify a correspondence address to which the Office will send notices, letters, and other communications relating to an application. The Office should be promptly notified of any change in correspondence address. The required notification of change of correspondence address need take no particular form. However, it should be provided in a manner calling attention to the fact that a change of address is being made. Thus, the mere inclusion, in a paper being filed for another purpose, of an address which is different from the previously provided correspondence address, without mention of the fact that an address change is being made would not ordinarily be recognized or deemed as instructions to change the correspondence address on the file record.
See MPEP § 601.03(a) for information specific to correspondence address changes in an application filed on or after September 16, 2012. See MPEP § 601.03(b) for information specific to correspondence address changes in an application filed before September 16, 2012.
See MPEP § 711.03(c) for treatment of petitions to revive applications abandoned as a consequence of failure to timely receive an Office action at the correspondence address of record (e.g., because the Office action was mailed to the incorrect correspondence address).
Note that the obligation (see 37 CFR 11.11 ) of a registered attorney or agent to notify the Director of the Office of Enrollment and Discipline of any change of his or her address is separate from the obligation to file a notice of change of address in individual applications. Unless the correspondence address is designated as the address associated with a Customer Number, a separate notification must be filed in each application for which a person is intended to receive communications from the Office. See MPEP § 403 for Customer Number Practice. In those instances where a change in the correspondence address of a registered attorney or agent is necessary in a plurality of applications, the notification filed in each application may be a reproduction of a properly executed, original notification. The original notice may either be sent to the Office of Enrollment and Discipline as notification of the change of address (37 CFR 11.11 ), or may be retained by applicant.
[Editor Note: See MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012.]
· (a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76 ), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 37 CFR 1.63(b)(2) ) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office's electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.
· (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
· (1) A patent practitioner of record;
· (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
· (3) The applicant (§ 1.42 ). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
*****
· (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
· (f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
· (g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
37 CFR 1.33(a) provides that the application must specify a correspondence address to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (37 CFR 1.76 ) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.
Applicants should provide clear instructions regarding the correspondence address. If more than one correspondence address is specified, whether in a single paper or in multiple papers, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. If an applicant provides multiple correspondence addresses in a single paper (e.g., providing both a typed correspondence address and a Customer Number in a single paper) or multiple papers (e.g., an oath or declaration, a transmittal letter, and a preliminary amendment that each includes a different correspondence address), and the Office does not select the correspondence address actually desired by applicant, the Office will not remail papers to the desired address. See MPEP § 707.13 for remailing of returned Office correspondence. Note that the hierarchy provided in 37 CFR 1.76(d) for inconsistencies between an application data sheet and other documents governs. Accordingly, if the ADS includes a typed correspondence address, and the declaration submitted at the same time gives a different address (e.g., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to 37 CFR 1.33(a).
For applications submitted via the Office’s electronic filing system, although an electronic acknowledgment receipt will be sent to the submitter, a correspondence address must still be set forth in either an application data sheet (37 CFR 1.76 ) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.
The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2 ), a daytime telephone number is useful in initiating contact that could later be reduced to writing. Any party who may change the correspondence address may also change the telephone number.
37 CFR 1.33(a) specifies that the correspondence address may be changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent practitioner of record) or 37 CFR 1.33(b)(3) (the applicant under 37 CFR 1.42 ). 37 CFR 1.33(a) also provides that prior to the appointment of any power of attorney under 37 CFR 1.32(b), the correspondence address may be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of 37 CFR 1.34.
Prior to the appointment of any power of attorney, if a patent practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal papers may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal papers for purposes of changing the correspondence address. A clear identification of the individual as a representative is required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person (other than a patent practitioner) who has the authority to act on behalf of the company may not change the correspondence address, as all papers signed on behalf of a juristic entity must be signed by a patent practitioner.
The correspondence address will not be changed by filing a paper (such as an application data sheet) which includes a correspondence address which is different from the correspondence address of record if the paper does not clearly identify that an address change is being made.
37 CFR 1.33(e) provides that a change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See 37 CFR 11.11.
37 CFR 1.33(f) provides that where application papers (e.g., the inventor’s oath or declaration) from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. If not submitted, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application and correspondence may be mailed to a previously designated correspondence address.
37 CFR 1.33(g) provides that a practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner. 37 CFR 1.33(g) provides a means for practitioners acting in a representative capacity in an application to effect a change in correspondence address after the patent has granted but does not provide authority to a practitioner acting under 37 CFR 1.34 to change the correspondence address in an application. See 37 CFR 1.33(a).
[Editor Note: See MPEP § 601.03(a) for change of correspondence address in applications filed on or after September 16, 2012.]
· (a) Correspondence address and daytime telephone number . When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76 ), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2) ) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office’s electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
· (1) Prior to filing of § 1.63 oath or declaration by any of the inventors . If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
· (2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
*****
Pre-AIA 37 CFR 1.33(a) provides that the application must specify a correspondence address to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (pre-AIA 37 CFR 1.76 ) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. Additionally, applicants will often specify the correspondence address in more than one paper that is filed with an application, and the address given in the different places sometimes conflicts. Where the applicant specifically directs the Office to use non-matching correspondence addresses in more than one paper, priority will be accorded to the correspondence address specified in the following order: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney. Accordingly, if the ADS includes a typed correspondence address, and the declaration gives a different address (i.e., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. In the experience of the Office, the ADS is the most recently created document and tends to have the most current address. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to pre-AIA 37 CFR 1.33(a)(1).
The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to pre-AIA 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2 ), a daytime telephone number is useful in initiating contact that could later be reduced to writing. Any party who may change the correspondence address may also change the telephone number.
Pre-AIA 37 CFR 1.33(a)(1) provides that the party filing the application and setting forth a correspondence address may later change the correspondence address provided that an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors has not been filed. If a patent practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal papers may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal papers for purposes of changing the correspondence address. A clear identification of the individual as a representative is required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person who has the authority to act on behalf of the company may change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address pursuant to pre-AIA 37 CFR 1.33(a)(1). The filing of an executed oath or declaration that does not include a correspondence address does not affect any correspondence address previously established on filing of the application, or changed pursuant to pre-AIA 37 CFR 1.33(a)(1).
Where a correspondence address has been established on filing of the application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 and can only be subsequently changed pursuant to pre-AIA 37 CFR 1.33(a)(2). Under pre-AIA 37 CFR 1.33(a)(2), where an executed oath or declaration under pre-AIA 37 CFR 1.63 has been filed by any of the inventors, the correspondence address may be changed by (A) a patent practitioner of record, (B) an assignee as provided for under pre-AIA 37 CFR 3.71(b), or (C) all of the applicants (pre-AIA 37 CFR 1.41(b) ) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with pre-AIA 37 CFR 3.71. See pre-AIA 37 CFR 1.33(a)(2).
Special care should be taken in continuation or divisional applications to ensure that any change of correspondence address in a prior application is reflected in the continuation or divisional application. For example, where a copy of the oath or declaration from the prior application is submitted for a continuation or divisional application filed under pre-AIA 37 CFR 1.53(b) and the copy of the oath or declaration from the prior application designates an old correspondence address, the Office may not recognize, in the continuation or divisional application, the change of correspondence address made during the prosecution of the prior application. Applicant is required to identify the change of correspondence address in the continuation or divisional application to ensure that communications from the Office are mailed to the current correspondence address. See pre-AIA 37 CFR 1.63(d)(4).
See MPEP Chapter 1800, especially MPEP § 1893.01 for requirements for entry into the national stage before the Designated Office or Elected Office under the Patent Cooperation Treaty (PCT).
An application data sheet (ADS) is a sheet or set of sheets containing bibliographic data, which is arranged in a format specified by the Office. An ADS must comply with the requirements of 37 CFR 1.76, and may be submitted in a provisional application under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a nonprovisional international design application, or a national stage application under 35 U.S.C. 371. See MPEP § 601.05(a) for requirements for an ADS that are specific to applications filed on or after September 16, 2012. See MPEP § 601.05(b) for requirements for an ADS that are specific to applications filed prior to September 16, 2012.
When an application data sheet is provided in a patent application, the application data sheet becomes part of the application and must comply with 37 CFR 1.52. While the use of an application data sheet is not always required (see MPEP §§ 601.05(a) and 601.05(b)), the Office prefers its use in all applications to help facilitate the electronic capturing of important data. When an ADS is optional, the data that is suggested to be supplied by way of an application data sheet can also be provided elsewhere in the application papers, but it is to applicant’s advantage to submit the data via an application data sheet. To help ensure that the Office efficiently captures the data, the Office specifies a particular format to be used. The Office also provides a fillable form (PTO/AIA/14 for applications filed on or after September 16, 2012 and PTO/SB/14 for applications filed prior to September 16, 2012) on the Office’s website, which contains the bibliographic data arranged in the specified format. The Office’s fillable form is designed to be completed electronically and then filed via EFS-Web or in paper. However, the data will only load directly into the Office’s electronic systems when the PTO/AIA/14 or PTO/SB/14 is submitted as an EFS-Web Fillable Form, rather than a scanned portable document format (PDF) image submitted electronically via EFS-Web or in paper.
In addition to the Office’s fillable form, applicants have the option to utilize the enhanced Web-based version of the ADS for submission of an ADS with the filing of a new utility or design application. For more information, see the "Quick Start Guide for Web-based Application Data Sheet (Web ADS)" available at https://www.uspto.gov/ patents-application-process/ applying-online/efs-web-guidance-and-resources. If the applicant is a registered filer of EFS-Web, a Web-based corrected ADS is also available for use for certain existing applications filed on or after September 16, 2012. A corrected Web-based ADS is not permitted in international applications, national stage applications under 35 U.S.C. 371, provisional applications, plant applications, reexamination proceedings, and supplemental examinations under 35 U.S.C. 257. The corrected Web-based ADS will be pre-populated with information of record. Therefore, applicants can type in the desired changes in the corrected Web-based ADS and the system will create a PDF version with the appropriate strike-through and underlining.
[Editor Note: See MPEP § 601.05(b) for a discussion of the requirements of an ADS for applications filed before September 16, 2012. 37 CFR 1.76(b)(3), directed to reference filing under 37 CFR 1.57(a), is applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. For 37 CFR 1.76(b)(3) applicable to applications filed on or after September 16, 2012 and before December 18, 2013, see 37 CFR 1.76 (2012-09-16 thru 2013-12-17); for applications filed prior to September 16, 2012, see pre-AIA 37 CFR 1.76 as reproduced in MPEP § 601.05(b).]
· (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), a nonprovisional international design application, 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, 365, or 386. 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. When information concerning the previously filed application is required under § 1.57(a), application information also includes the reference to the previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed.
· (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, 365(c), or 386(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 (or intellectual property authority), 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 inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor's oath or declaration. The information in the application data sheet will govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
· (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.
· (f) Patent Law Treaty Model International Forms. The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form, and the requirement in § 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form. The requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, as applicable.
· (g) Patent Cooperation Treaty Request Form. The requirement in § 1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet and the requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. If a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111, the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.
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), a nonprovisional international design application, 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, 365, or 386 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.
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.
For applications filed on or after December 18, 2013, when information concerning the previously filed application is required under 37 CFR 1.57(a), application information also includes the reference to the previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed. Effective December 18, 2013, 37 CFR 1.57 and 37 CFR 1.76(b)(3) were amended to implement the reference filing provisions of 35 U.S.C. 111(c). 37 CFR 1.57(a) now provides that, subject to the conditions and requirements of 37 CFR 1.57(a), a reference to a previously filed application, made in the English language in an ADS in accordance with 37 CFR 1.76 upon the filing of an application under 35 U.S.C. 111(a) indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, shall constitute the specificatio
