2001 through 2017 IPLEGALED, Inc. All Rights Reserved

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1 CHAPTER 2 FREQUENTLY USED DOCUMENTS AND CONCEPTS There are a number of documents and concepts peculiar to patent practice that you will use frequently in your professional practice. They are essentially generic since they apply to almost all applications. Using these should become second nature to you. The documents and concepts we are about to discuss are (i) Transmittals, (ii) Requests for Extension of Time, (iii) Claiming Priority, (iv) Incorporation by Reference, and (v) Application Data Sheets. Ch.2/A: Transmittals A transmittal is a general term for a cover sheet and checklist of all the documents being sent to the USPTO. The USPTO has a standard transmittal, PTO/SB/21, that can be used for all sorts of post-filing correspondence. Another transmittal, PTO/AIA/15, is used when filing a new application. We recommend using a transmittal, because it serves as a useful checklist; however, you are not required to use a transmittal, and when filing applications and other documents by EFS-Web it is becoming increasingly common not to use one. Ask your attorney what the firm/company policy is. Below are examples of the Transmittal Form PTO/SB/21, which may be used for most correspondence after initial filing, and another transmittal, PTO/AIA/15, used when filing a new application. Make sure to check the following: - The correct transmittal is being used for the documents you are sending (Utility, Patent Application, or Transmittal for correspondence after initial filing). - The serial number is correct (if you have one). - The filing date is correct. - The attorney docket number is filled in. - The Deposit Account number is correct (if applicable). - The attorney has signed the appropriate box, and his/her registration number is listed. Remember that all patent-related documents (applications and follow-on documents) filed via EFS-Web are accorded the date and time of receipt in the USPTO, not local time where your computer is. 29

2 Example: Transmittal Form PTO/SB/21 for post-filing documents 30

3 Example: Transmittal Form PTO/AIA/15 for filing a new application 31

4 Ch.2/B: Request for Extension of Time (to respond to USPTO correspondence) This is another very important concept. It may seem a bit confusing before you have had a chance to read ahead, but try to understand this section as well as you can for now, and revisit it when Extensions of Time are mentioned later on. During the process of patent prosecution, correspondence is exchanged between the patent attorney and the USPTO. When the USPTO sends correspondence (often called an "Office Action"), it will set a deadline by which a response must be filed. The deadline is calculated from the notification date (also called the mailing date ) printed on the USPTO correspondence and can never be less than 30 days. By law, the USPTO is allowed to give you a maximum of six months to respond to an Office Action; this is called the maximum statutory period (MPEP ; 37 CFR 1.136a). However, the usual practice is to give the applicant a Shortened Statutory Period to respond. This is usually either one or three months from the notification date of the USPTO correspondence. The applicant can usually extend the deadline by filing a request (technically a "petition") for an Extension of Time, together with the required fee (MPEP e). Due dates can be extended in one-month increments, up to the maximum statutory period of six months from the notification date of the USPTO correspondence. Successive extensions become more and more expensive. Extensions of time are requested retrospectively, meaning that they are usually filed with (and not before) the late response to an Office Action. The extension of time covers whole months and parts thereof. So, for example, if a response is one day late, the applicant must request a one-month extension. If the response is six weeks late, the applicant must request a two-month extension. If a response is exactly three months late, the applicant must request a three-month extension. Note that the date of response is the date mailed using a Certificate of Mailing by First Class Mail. An important exception is the date for payment of the issue fee, which is not extendable. Safety Net If you do not request an extension (or you request an extension that is too short), the response will not be accepted, and the clock continues to tick until the USPTO receives the correct request, or, after six months, the application automatically becomes abandoned. BUT, the USPTO, tired of applications accidentally becoming abandoned, has instituted a safety net procedure (MPEP e). The safety net means that even if the applicant forgets to request an extension of time or requests the wrong extension, the response will be treated as if a correct request had been made, IF the applicant has done one of these three things: 1) Previously sent in a blanket authorization that the USPTO should charge all required fees to the applicant's deposit account; or 32

5 2) Previously sent in a written authorization that any response requiring a petition for extension of time, but failing to include one, should be treated as though it does include one; or 3) Submitted the correct fee, including any extension-of-time fee, even though a petition was not included. Thus, it is suggested that one of the blanket statements mentioned above, should always be included in early correspondence, such as with the application documents. It is often convenient to incorporate it into the original application transmittal form. Ch. 2/C: Claiming Priority The concept of priority comes up frequently and is important to understand. As you know, the filing date of a patent application may be very important in determining ownership and in defining an application as prior art at a particular date. Often, an applicant will be filing a non-provisional application from a provisional, or will be filing a second or third application in a series. The applicant will want the later filed application to claim the earliest possible date as the date upon which the description of the invention was first officially submitted to the patent office. Thus, the later-filed application will "claim priority" to the earlier-filed ( parent ) application. This is also referred to as "claiming the benefit" of the earlier application. The earlier application is often referred to as the "priority document." In essence, the applicant is stating that the invention described and disclosed in the present application is the same as the invention disclosed in the earlier application, and, therefore, the priority date of the later application is the same as the filing date of the earlier application. A claim of priority can be made only to an application that is still pending. You cannot claim priority to an abandoned application. You can clam priority any time up to the day the parent application becomes abandoned. A claim of priority can be made to a pending US provisional or non-provisional application or to a foreign application. Priority should always be properly claimed at the time of filing. If priority is not properly claimed it can cause serious problems for the application, necessitating drastic corrective measures, such as the filing of a reissue application (see MPEP 1401 and 1402). One common instance in which a claim of priority will be made is upon filing a nonprovisional application that claims priority to a provisional or foreign application. Another is upon filing a Continuation or a Divisional that claims priority to one or more earlier-filed applications. In certain circumstances, an application may contain both old information and new information ("new matter") about an invention. Such a patent application, called a Continuation-in-Part, effectively has two priority dates, one for the new matter (the filing date of the CIP) and one for the old matter (the filing date of the priority application). 33

6 A claim of priority must always be made in the Application Data Sheet (ADS) (PTO/SB/14). If not made in the ADS, the priority claim is invalid. It may also be set out in the declaration and incorporated into the application text itself, but it is essential to use the ADS to claim priority. We shall discuss these in much more detail later. A claim of priority is optionally set out in the patent application under the section headed "Cross-Reference to Related Applications" or "Cross-Reference to Previous Applications," which generally appears just after the Title. Appropriately clear and unambiguous words should be used, clearly stating that the applicant claims priority and identifying the application(s) to which priority is claimed. For example, a proper statement may read, "This application claims the benefit of the filing date of US Provisional Application Ser. No. 60/426,137, filed Nov. 14, 2012, entitled Method and Apparatus for Treating Insomnia in Cats. " Or, alternatively, "This application is a divisional of co-pending US Application Ser. No. 10/426,137, filed Nov. 14, 2012, entitled Method and Apparatus for Treating Insomnia in Cats. " Ch. 2/D: Incorporation by Reference Incorporation by reference is another simple but important concept, one which will usually come up in conjunction with claiming priority. If the application claims priority to one or more earlier-filed applications, these applications are usually incorporated by reference, meaning that the entire specification of the previous application is to be treated as though it exists, word-for-word, in the present application. The applicant can then rely on this disclosure during patent prosecution. Just as with the claim of priority, the incorporation by reference should always be explicitly set out in the section headed "Cross-Reference to Related Applications," below the Title. When incorporation by reference is made, it is important to use the correct language. This generally includes using the phrase "incorporated by reference" and identifying the application/patent by stating the application/patent number, the filing date of the application/patent, the status of the previous application (pending, patented as patent number 1,234,567, or abandoned), and the relationship of the previous application to the current application, such as Continuation, Divisional, or Continuation-in-Part. Here are two examples of statements cross-referencing related applications, claiming priority and also including a proper incorporation by reference: "This application is a continuation of co-pending US application No. 10/245,877, filed on March 23, 2014, herein incorporated by reference in its entirety for all purposes." "This application is a divisional of US Ser. No. 14/600,158, filed Jun. 20, 2014, which is a division of US Ser. No. 09/534,811, filed Mar. 24, 2011, now US Pat. No. 9,613,318, which claims priority from provisional application no. 61/926,069, filed Mar. 25, 2009; the contents of all above-named applications are incorporated herein by reference." 34

7 Additionally, incorporation by reference may be used to incorporate other documents, such as patents, patent applications, applications and scientific or engineering papers which are used not to claim priority but to describe the invention or otherwise support the application. The type of document that may be properly incorporated by reference for various purposes is narrowly defined, since it is established law that a patent application as filed "must be complete in itself in order to comply with 35 USC 112." However, it has been ruled by the USPTO that a patent application may incorporate "essential material" by reference to (1) a US patent or (2) a pending US application. "Essential material" is defined as that which is necessary to describe the claimed invention to the extent required by patent law (35 USC 112). In any application which is to issue as a US patent, essential material may not be incorporated by reference to (1) patents or applications published by foreign countries or a regional patent office, (2) nonpatent publications, (3) a US patent or application which itself incorporates "essential material" by reference, or (4) a foreign application. If any essential material, necessary for supporting a claim, is derived from any such sources, the applicant should amend the specification to add, verbatim, the text relied upon in the incorporated document. "Nonessential material" may be incorporated by reference, and is defined as subject matter referred to for purposes of indicating the background of the invention or illustrating the state of the art. Nonessential material that may be incorporated by reference includes (1) patents or applications published by the US or foreign countries, (2) prior-filed, commonly owned US applications (whether published or not), and (3) non-patent publications, such as scientific papers or sections from books. Mere reference to another application, patent, or publication is not a proper incorporation by reference. The correct explicit language must be used. It should be noted that hyperlinks and/or other forms of browser executable code cannot be incorporated by reference (see MPEP ). Ch. 2/E: Application Data Sheet ADS (PTO/SB/14) An ADS is usually completed before filing with the other application documents and is filed in the form of a.pdf document. However, when you file certain applications, you may be given the option of completing an ADS as a screen-fillable form. This is a very simple option if you choose to use it. An ADS is not always mandatory, but it is frequently mandatory and we highly recommend that you always use one for every application you file, with the exceptions of an RCE (Request for Continued Examination), a PCT, and a US national stage entry application under 35 USC 371 where the PCT filing date (international filing date) is before September 16, If in doubt file an ADS. 35

8 The ADS is mandatory (1) if you are making any foreign or domestic priority claims, i.e., if the application is a Continuation, Divisional, CIP, etc. (except applications entering the national stage under 35 U.S.C. 371); (2) if you have a non-inventor applicant (an applicant who is not an inventor); (3) if the signed declaration is not being filed with the initial filing but will be filed later. Using an ADS in this case allows you to postpone the declaration until the application is in condition for allowance; or (4) to disclose the inventorship where there are joint inventors and each joint inventor is executing a declaration that only names that inventor and not all of the inventors. It is easy to get confused, so we recommend you ALWAYS USE AN ADS unless you are 100% certain you do not need one. The ADS asks you to supply information that includes (1) Applicant information - name, address, whether they are assignee, legal representative, or obligated party, etc. (2) Inventor information - name, residence, mailing address, etc. (3) Correspondence information - may be indicated by a customer number. (4) Application information - title of the invention, suggested classification, the total number of drawing sheets, a suggested drawing figure for publication, docket number, the type of application (e.g., utility, plant, design, reissue, provisional), etc. In this section there is also a box to state whether the application is being filed by reference. (see below) (5) Representative information - includes the registration number(s). (6) Domestic priority 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. If the prior application is a PCT, and the present application is a US national phase, enter the PCT number and international filing date here. (7) Foreign priority information - includes the application number, country, and filing date of each foreign application for which priority is claimed. (8) Applicant information - This section is used only when the inventors are not the applicants. If the inventor(s) are the applicants, leave this section blank. (9) Assignee information - name and address of the assignee. (10) Non-assignee applicant information - name and address of an assignee who is not also a named applicant on the application. Always use the latest version of the ADS form PTO/AIA/14. Do not recycle old ADSs. Completing the fields claiming domestic or foreign benefit (claiming priority), can get confusing because it is not obvious what information goes in which fields. In the example 36

9 below, we are filing a non-provisional application (application number not yet known) claiming benefit to a pending provisional application (application number 62/123,456). (A) The Prior Application Status, i.e., the status of the provisional, is Pending. (B) The Application Number refers to the application being filed. This is left blank because you do not know it you have yet to file the application. (C) The Continuity Type is Claims benefit from provisional (D) The Prior Application Number is the provisional No (E) The Filing Date is the provisional filing date of The USPTO can be very picky, and the smallest error in the ADS can cause it to be rejected. For example, we have seen an ADS rejected because one number was left off the attorney s registration number. This voids the ADS, which is then regarded merely as a transmittal, and it negates all the priority claims and declaration information. The USPTO considers the information to have never been submitted and that it is missing from the ADS. Correcting an ADS requires the filing of a new, amended ADS. A corrected ADS requires you to use standard amendment format, i.e., underlining newly added text and strikethrough deleted text. However, it can be very confusing as to what text is considered missing and what text is considered present. Consequently, it is vital to be very careful about signatures and all other aspects of the ADS. You do have four months to correct the priority by sending a new ADS, but it can be very frustrating. The ADS includes a section to identify non-inventor applicants such as a university or corporation for whom the inventor is working. This section should be left blank if one or more inventors is/are an applicant. The ADS also includes a section to identify a nonapplicant assignee. This is used when an applicant is the inventor but has assigned the application to a non-applicant assignee. There is a box to check if the applicant or the assignee is an organization such as a corporation. Once you select this box the form will 37

10 change to provide fields you need for a corporation rather than an individual. You must not use the old ADS forms, as they do not include these sections. Note: Where the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (i.e., an assignment or an employment contract containing an assignment clause) should be recorded in the assignment records no later than payment of the issue fee. (37 CFR 1.46(b)(1)). Where the applicant is a juristic entity, that is, a corporation or other legal entity, the ADS may be signed only by a patent attorney/agent. For other applicants, the ADS may be signed either by the applicant or by a patent practitioner (37 CFR 1.33(b)). Filing an application by reference Under section 35 USC 111(c), you can file a patent application using an ADS but without filing a specification or claims. You do this by filling in the section for Filing by Reference in the ADS. You simply need to identify a previously-filed application, which can be a foreign application. The specification and drawings of the prior application then constitute the new application, and copies must be filed within the prescribed time period. You will receive a USPTO notice setting a time limit to file the application papers. If the prior application is a foreign application, you may have to file a certified copy. If you file by reference and make an error in the prior application information, you can correct it by filing a petition under 37 C.F.R Remember that all US priority claims under 37 CFR 1.78 and foreign priority claims under 37 CFR 1.55 MUST be set forth in the ADS. Under the old rules you had to state domestic priority in the first paragraph of the application, and you had to state foreign priority in the declaration. But the new rules require that any priority claim must be made in an ADS or it will not be recognized. If priority is not claimed (or incorrectly claimed) in the ADS, you have only 16 months from the priority date or 4 months from the date of filing to correctly claim priority. You do this by filing a corrected ADS. See MPEP ; 37 CFR If you miss this date, you may be able to file a petition, which is expensive. Exception: For applications entering the US national stage under 35 U.S.C. 371, foreign priority claims are not required to be set forth in the ADS, but foreign priority claims in these applications must have been timely made in the PCT request form when the PCT was filed. Remember, we highly recommend that you always use an ADS for every application you file, with the one exception being a US national stage entry under 35 USC 371 when the Patent Cooperation Treat (PCT) filing date (international filing date) is before September 16, Transitional Applications Rule: A special rule has been instituted to deal with the cases of transitional applications that are filed on or after March 16, 2013 but that claim priority 38

11 to an application filed before that date. In this case you have to make a statement telling the patent office whether the newer application contains (or ever contained) one or more claims with an effective priority date on or after (not on or before) March 16, Logically, such a claim could be possible only if the new application is a Continuationin-Part (CIP). In effect, this seems to be the PTO asking you (without clearly telling you they are asking) if the new application is a CIP and if you have written a claim to the new matter. The present version of the Application Data Sheet (ADS) includes a section for this purpose, called Statement under 37 CFR 1.55 or 1.78 for AIA (First Inventor to File) Transition Applications. For those of you experienced with filing ADSs, you should know that there is no longer a supplemental ADS. Information may be corrected or updated by filing a new ADS that contains only the sections containing changed or updated information. Changes must be shown by underlining for insertions and strikethrough or brackets for deletions. Each section containing changed, updated, or added information must contain all of the information already of record with the changes shown by those markings. Note that if required for your particular filing, the ADS must be submitted whether you are filing by EFS-Web or using paper. The ADS form is not well suited to paper filing, and the USPTO suggests you simply print it and fill it out, or create your own. Note about PTO/AIA/14: Unless they have been fixed, there may be some glitches with the ADS form. The fields for Title of the Invention and Docket Number and Application Number appear on several pages. Currently, in some of these fields data cannot be entered. There is simply no active data entry field. However, once you have completed the later fields (under Application Information ) where the data entry fields are active, the form will automatically populate all the other, identical fields. Correcting an Application Data Sheet If you need to file a corrected ADS you will have to send in a new ADS with any changes marked up using standard amendment markings (i.e., additions underlined and deleted information shown using strikethrough or brackets if less than five characters). You can fill in all the fields, or the ADS may be limited to showing only the section(s) of the ADS that contains the changed information. The requirement for identification of the information being changed applies to all application data sheets, regardless of the filing date of the application or proceeding under both versions of 37 CFR Please note that, for an application filed before September 16, 2012, applicants must still file a 39

12 Supplemental ADS with markings and include all of the sections, not simply a corrected ADS, to change the information. See MPEP for more information. ADS Improperly Signed A so-called improperly signed ADS can cause a big problem. For a start, it means that all the priority information as well as the inventorship and applicant information you send is simply ignored. The USPTO will send you a very unhelpful notice, which may be sent as part of a Notice to File Missing Parts which states: The notice will not explain why the signature is improper or how you are supposed to correct it. Effectively, they treat the ADS as having no information in all fields in all sections to do with inventors, applicants, non-applicant assignees, and priority. It is as though you simply left these fields BLANK and the only information you gave them was the title, docket number, and correspondence information. Call the USPTO right away. If you are lucky you will get someone experienced at the Office of Data Management Application Assistance Unit who can walk you through exactly what you need to do to correct the ADS. What constitutes an improperly signed ADS? Sometimes it is as obvious as complete lack of signature, signature in the wrong box, improper format of e-signature (/John Hancock/), or misspelling. Lack of a USPTO registration number will be treated as an improperly signed ADS, as well. And, fairly outrageously, even a single number left off the registration number will get the whole ADS treated as improper. This is a very easy mistake to make, because the field for the registration number contains invisible spaces for only five characters. So if you are typing quickly, have reached the last field, and have used a comma, which is the usual way to write the registration number, you will be left with only four numbers total, making it an improperly signed ADS. All applicant information, assignee information, inventor names and addresses, and all priority data will be lost. Now it is just a transmittal letter according to the USPTO. You correct it by sending in, within any time limit, a new ADS with any additions underlined and all deleted information shown using strikethrough or brackets if less than five characters. But what do you underline? Remember that the USPTO pretends that many of the fields were LEFT BLANK; therefore you have to add this information in and underline it as though it is totally new. This means that applicant information, assignee information, inventor names and addresses, and all priority data must be underlined. Before you send anything in, call the USPTO, make sure everything is correct, and get the name of the person you talked to. If not fixed properly these issues can go on for several rounds of correspondence and cause a lot of problems. 40

13 Example: Patent Application Data Sheet form PTO/AIA/14 (1 of 6) 41

14 Example: Patent Application Data Sheet form PTO/AIA/14 (2 of 6) 42

15 Example: Patent Application Data Sheet form PTO/AIA/14 (3 of 6) 43

16 Example: Patent Application Data Sheet form PTO/AIA/14 (4 of 6) 44

17 Example: Patent Application Data Sheet form PTO/AIA/14 (5 of 6) 45

18 Patent Application Data Sheet form PTO/AIA/14 (6 of 6) Corrected Web-ADS and Enhanced Initial Web-ADS You will usually be using the ordinary ADS form (PTO/SB/14). But from 2015 there is also a Corrected Web-ADS and an Enhanced Initial Web-ADS form. See: and (1) Corrected Web-ADS. See 37 CFR 1.76(c)(2). Registered efilers can use this option to file a corrected or updated ADS where changes are identified with underlining for insertions, and strike-through for deletions. EFS-Web will generate and attach the Corrected ADS.pdf, which will be reviewed and processed by the Office of Patent Application Processing (OPAP). Before using this, carefully review the USPTO s Quick Start Guide. (2) Enhanced Initial Web-ADS. Registered efilers can use this option to import Inventor information, Domestic Benefit data, National Stage data, and/or Foreign Priority data when completing a Web ADS submission. Data may be retrieved for efilers who either have power of attorney in an unpublished parent application, or where the parent application is published or patented. See the USPTO Application Data Sheet Quick Start Guide. To use the Corrected Web-ADS. You first have to determine if the application is eligible for this system - many applications are not eligible. See the USPTO s Quick Start guide. (a) The candidate application must have been filed on or after September 16, (b) The application is required to have a Customer Number address. (c) The candidate application must not be any of these types: PCT application in the international phase US national phase from a PCT application ( 371 case ) Hague (international design) application Provisional 46

19 Reexam Plant Supplemental Exam 2001 through 2017 IPLEGALED, Inc. All Rights Reserved Thus, the application must be one of these types: -Nonprovisional utility that is not a 371 case -Reissue -Design If you determine that the application is eligible to use the Corrected Web-ADS, go into EFS-Web, sign in, and under Main Functions select the radio buttons below: If there is a validation error, such as your application is not eligible for Corrected Web- ADS, a large font notice will appear at the top of the screen. The screen shows you the entire ADS in sections, and lets you update most of the information. Some information, such as correspondence address, is not editable. Simply follow the instructions, update the data as needed, sign and submit. If you have any questions, click on the Quick Start Guide link near the top right of the screen. To make changes in the information, just type or delete text into the boxes and the new information will be reflected with standard underlining and strikethrough notation in the Corrected ADS that is automatically generated after you submit the changes. Do not 47

20 delete information that you are not changing or do not want deleted, otherwise the Corrected ADS that is generated will provide an instruction to the Office to delete that information. This is the way the ADS appears on the screen allowing you to make changes: This is the way the ADS appears once you have made the changes: 48

21 There are some non-intuitive things about the system: Inventor addresses. If there are multiple inventors, the system may only retrieve the mailing address of the first named inventor, and you do not need to type in the mailing addresses for the second and any subsequent inventors, even though this information is not reflected on the web screen. If you have previously provided mailing addresses for all of the inventors and are now submitting a Corrected ADS to make a change in the mailing address of the second or any subsequent inventor, just type in the new information on the web screen and it will be reflected with underlining on the Corrected ADS that is generated. Claims to domestic benefit. When making a change to the domestic benefit claim, the Corrected ADS that will be generated will use internal PALM codes rather than the language that you use to specify the relationship: Continuation of CON Division of DIV Continuation in part of CIP A 371 of international NST Substitution of SUB Reissue of REI Claims benefit of provisional - PRO Order of inventors. To change the order of Inventors before submitting the ADS, enter the number in the left-hand box and make sure each number is only used once. Then click the Continue button once the ADS is complete. Adding or deleting inventors. If you are adding or deleting inventor(s), then a request under 37 CFR 1.48(a) with the proper fee(s) must also be submitted. Note that both a processing fee and an additional fee may be due if the correction of inventorship is being made after the first action on the merits. See 37 CFR 1.48(c). If you are correcting or updating the name of an inventor, or changing the order of the names of joint inventors, then a request under 37 CFR 1.48(f) with the proper fee must also be submitted. 49

22 Correspondence Information. In the Correspondence Information section, data of record will be displayed, but the data is not editable. A change of correspondence address can be effected via private PAIR or filed in paper (see USPTO form PTO/AIA/122 Change of Correspondence Address ). Representative Information. In the Representative Information section, data of record will be displayed, but the data is not editable. Providing representative information in the Application Data Sheet does not constitute a power of attorney in the application (see 37 CFR 1.32). To appoint or revoke a power of attorney, a properly signed power of attorney must be filed in the application. See USPTO Forms PTO/AIA/82, PTO/AIA/81, or PTO/AIA/80 (which must be accompanied by Form PTO/AIA/96). Domestic Benefit/National Stage Information. In the Domestic Benefit/National Stage section, data of record will be displayed and editable. If any domestic benefit claims are being added in a utility or plant application after the time period set forth in 37 CFR 1.78 (e.g., after the later of four months from the actual filing date of the instant application or 16 months from the filing date of the application for which benefit is being claimed), a petition to accept an unintentionally delayed benefit claim in compliance with 37 CFR 1.78 (including the petition fee) must also be submitted. Foreign Priority Information. In the Foreign Priority section, data of record will be displayed and editable. 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 Additional foreign priority claims may be added by clicking the Add button, and deleted by clicking the Remove button for the indicated claim. If any foreign priority claims are being added in a utility or plant application after the time period set forth in 37 CFR 1.55 (e.g., after the later of four months from the actual filing date of the instant application or sixteen months from the filing date of the prior foreign application), a petition to accept an unintentionally delayed foreign priority claim in compliance with 37 CFR 1.55 (including the petition fee) must also be submitted. For any foreign priority claims that are being deleted, please ensure that deletion of the foreign priority claim(s) is actually desired. A deletion of a foreign priority claim may be considered as a showing that the applicant is intentionally waiving the foreign priority claim. Applicant Information and Assignee information. This information of record will be displayed and editable. Attaching Documents and revising your submission. Once you have made all necessary changes to the ADS and clicked Continue, a CorrectedADS.pdf document will be auto-generated. This document cannot be removed from the Attach Documents Screen. You may click on the respective.pdf hyperlink to preview the document. If you need to make any corrections, go back to the Application Data screen by clicking on the Application Data tab at the top of the screen. After making any corrections, you must click on the Continue button located at the bottom of the Application Data screen in order to apply any changes. The corrected ADS identifies the information that is 50

23 being changed, with underlining for insertions, and strike-through for text removed, as stated in 37 CFR 1.76(c)(2). If you have additional.pdf documents, you may add them to the submission. If you do not have any required documents to upload, click on the Review button. The following documents descriptions are made available for submission with a Corrected ADS filing: R48.REQ Request under Rule 48 correcting inventorship OATH Oath or Declaration filed LET. Miscellaneous Incoming Letter R3.73 Assignee showing of ownership per 37 CFR 3.73 TRAN.LET Transmittal Letter PET.OP Petition for review by the Office of Petitions PET.PCT Petition for review by the PCT legal office CFILE Request for Corrected Filing Receipt FRPR.IC Interim Copy of Foreign Priority Document (.pdf) FRPR.IC.TXT Interim Copy of Foreign Priority Document (.txt) Review Documents. On the Review Documents screen, the CorrectedADS.pdf cannot be removed. If you need to remove the CorrectedADS.pdf from the submission, you must cancel the filing. Calculation of Fees. The Calculate Fees screen allows you to select the appropriate entity status in the top left hand corner of the screen, adjusting the listed fee codes and amounts accordingly. The following fees are available when submitting a Corrected ADS filing: Processing Fee, Except Prov. Appls. Correction of inventorship after first action on merits 51

24 Petition for the delayed submission of a priority or benefit claim, or to restore the right of priority or benefit Save or Submit. Finally, you can save or submit the filing, providing an e-signature in the usual way and paying the fees as needed. GO TO CHAPTER QUIZ 52