August's advice article
Common Pitfalls on USPTO Forms
The patent application examination process is complex, with nearly all aspects of it governed by rules. The United States Patent and Trademark Office (USPTO) has developed numerous forms to aid with the filing and prosecution of patent applications. Although one is not required to use USPTO forms, they can be extremely helpful in complying with the requirements of the rules. However, the forms may contain legal terms that may be confusing to inventors filing without the assistance of a registered practitioner, also known as “pro se” applicants.
Two forms of particular importance to pro se applicants are the micro entity certification form and the Application Data Sheet (ADS). For qualifying applicants, micro entity status offers a 75 percent reduction in most fees. An ADS must be submitted if an applicant wishes to claim the benefit of an earlier filed application. Because many pro se applicants often file a provisional application, the ADS is necessary when they eventually file a non-provisional application. Below are some of the most common pitfalls found in these forms and tips for avoiding them.
In general, every applicable section of a form should be completed, but not all sections of a form are applicable to every case. For example, a “registration number” will be left blank by a signer who is not a registered patent practitioner. It is important to carefully read the entire form and contact the USPTO for clarification if anything on the form is unclear before filing it. Incorrectly filling out forms can cost applicants time, money, frustration, and sometimes even their patent rights.
Micro Entity Certification Form
- In order to qualify for micro entity status, the certification form must be signed in accordance with 37 CFR 1.33(b), which means the only parties who may sign the form are:
- A registered patent attorney or agent
- An inventor who is named as the sole inventor and identified as the applicant; or
- All of the joint inventors who are identified as the applicant. Joint inventor applicants should sign separate copies of the micro entity certification form.
- A proper signature can be either handwritten or an “S-signature” (37 CFR 1.4). The S-signature must consist only of letters and Arabic numerals, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature between first and second single forward slash marks (e.g., /Dr. James T. Jones, Jr./). In addition, the signer’s name must be printed in the name boxes located under the signature on the form for an S-signature. If the signer is an inventor applicant, the printed name must match the name on record as the inventor applicant.
- The top of the micro entity certification form includes boxes for identifying the application by application number, first named inventor, patent number, and title of invention. The applicant should fill out all known information at the time of filing. The first named inventor is a single name that will be the same on every micro entity certification form submitted in an application. Likewise, the title listed should match that in the ADS or specification. If the certification of micro entity status does not properly identify the application to which it relates, a notice will be mailed and a fee assessed. For micro entity certifications filed before an application number is assigned, the application must be identified with both the first named inventor AND the correct title of invention. All application-identifying information on the micro entity certification must be consistent with the application in which it is filed. Each application filed with the USPTO, whether a provisional application or a non-provisional utility application, is given a unique identifier by the USPTO. If the applicant is filing a non-provisional application, it will be assigned an application number unique from any previously filed provisional application having the same subject matter. Correspondence filed after the initial filing of the application must include the application number and filing date.
Application Data Sheet
- Every ADS must be signed in accordance with 37 CFR 1.33(b) by either a registered patent practitioner or the applicant. When a named applicant in the “Applicant Information” section is a juristic entity (e.g., a company-owned by the inventor), the ADS must be signed by a registered patent practitioner.
- An unsigned ADS will be treated only as a transmittal letter (37 CFR 1.76) with limited information being made of record from it. Inventor residence and mailing address, small entity status, establishment of inventorship, non-publication requests, benefit claims, and applicant information will NOT be made of record from an improperly signed ADS.
- If an applicant wishes to claim the benefit of an earlier-filed application, the claim must be made in the “Domestic Benefit/National Stage Information” section of an ADS (37 CFR 1.76). Applicants should take extra care to fill the correct information for each box and are strongly encouraged to read the detailed instructions online for filling out the ADS.
File by reference
- In an overwhelming majority of filed applications, the “Filing by Reference” section of the ADS should be left blank. This section is unrelated to claiming benefit to establish an earlier effective filing date. Completing the filing by reference section invokes specific laws that limit the application’s original disclosure to that of a previously filed application. Overcoming the mistake of completing this section can be particularly costly and time consuming.
Showing changes to the record
- Any time an ADS is filed after the initial of filing the application, regardless if it is the first submission of an ADS or a corrected ADS, the ADS must identify the information being changed on the record (37 CFR 1.76). Identification of these changes must be shown by underlining (underlining) for insertions and strikethrough (
strikethrough) or double brackets ( ) for text removed.
- Applicants should be sure to carefully check each entry in the ADS for typographical errors. Errors in the spelling of names, prior application numbers, addresses, etc. are not always easy to fix and can cost applicants money, time, and additional paperwork.
Hopefully, by being aware of these common mistakes, carefully reading the entire form before filling it in and carefully proof-reading your entries, applicants can avoid the unnecessary time and expense that comes from correcting mistakes on USPTO forms.