(After I blogged on November 22 about how USPTO could do better in receiving updated bib data, on December 21 USPTO announced a new system for receiving updated bib data. Please see my blog article about USPTO’s new system.)
About once a week in our office we find the need to update, change, or add bibliographic (bib) data in a pending patent application at the USPTO. In general what we find is that the USPTO does not follow its own rules for such changes. The USPTO’s procedures are ill-conceived, making poor use of the time of applicant and Office personnel alike. In a later blog post I will describe what USPTO should do instead. But for this blog post I will detail what the USPTO rules actually say about how to accomplish bib data changes, in the hope that this might be helpful to others.
The first thing to keep in mind is that if you wish to follow USPTO’s rules for bib data changes, you need to keep track of whether your filing date is before September 16, 2012 or is on or after that date. Related to this is the “gotcha” that for a 371 case (an entry into the US national phase), the filing date is the PCT filing date. The “filing date” listed in PAIR and on documents received from the USPTO for a 371 case is not the actual filing date. The actual filing date is the PCT filing date.
When you file a document with the USPTO to attempt to update bib data, the first thing that the USPTO employee will do is check to see what is listed in PAIR for the “filing date”. The employee will then reach a view as to which of the two procedures applies to this case (the pre-September-16 procedure or the newer procedure). If a case can be made out that the filer followed the other of the two procedures, then, with barely concealed glee, the employee will mail out a paper saying that the bib data change will not be entered because it follows the wrong procedure.
One way that things can take a wrong turn, then, is if the actual filing date of a 371 case is before September 16 while the “filing date” listed in PAIR is on or after September 16. In such a case, the applicant will have (quite correctly) followed the old procedure and yet the USPTO employee will (wrongly) assume that the new procedure should have been followed. The USPTO employee will refuse to enter the changes. When this happens, we find that the only workable next step is to file a petition which cites MPEP section 1896 and which asks that the USPTO employee be directed to enter the changes. (You might think that the way to get these things straightened out would be to phone up the USPTO employee and to explain his or her mistake, giving the employee a chance to save face by quietly withdrawing the refusal and entering the changes. This never works, in our experience.)
Old procedure. What is the old procedure (the procedure to be followed if the application filing date is before September 16, 2012)? The first step of the old procedure is to work out which of three mechanisms might have been used to communicate the most recent bib data in the case.
Oath or declaration. In a case filed before September 16, 2012, the most recent bib data might have been communicated by means of an inventor’s oath or declaration. If so, then the way to update the bib data is to construct an entirely new ADS, listing all of the bib data that had previously been made of record in the case. (The easiest way to do this, so as to avoid accidentally forgetting something important, is to use USPTO’s own form PTO/AIA/14.) Then go to the top of the ADS and add the word “Supplemental” before the existing words “Application Data Sheet”. Then, using the Acrobat typewriter tool, make use of text insertions and strikethroughs and underscores to show what changes are being requested.
Application data sheet. The most recent bib data might have been communicated by means of an ADS. If so, then the way to update the bib data is to start with that ADS, and add the word “Supplemental” before the existing words “Application Data Sheet”. Then use the Acrobat typewriter tool to make text insertions and strikethroughs and underscores to show what changes are being requested.
Supplemental ADS. The remaining possibility, for a case filed before September 16, 2012, is that the most recent bib data had been communicated by means of a Supplemental ADS. In other words, this procedure for bib data changes had already been carried out at least once already, and now is being carried an additional time. In such a case, then the way to update the bib data is to construct an entirely new ADS, listing all of the bib data that had previously been made of record in the case in that previous Supplemental ADS. (The easiest way to do this, so as to avoid accidentally forgetting something important, is to use USPTO’s own form PTO/AIA/14.) Then go to the top of the ADS and add the word “Supplemental” before the existing words “Application Data Sheet”. Then use the Acrobat typewriter tool with text insertions and strikethroughs and underscores to show what changes are being requested.
It is easy to see that this “old procedure” is ill-conceived. Depending upon the situation, this old procedure forces the filer to construct an entirely new ADS containing dozens or hundreds of pieces of information that are not intended to change. And it forces USPTO personnel to go on a “treasure hunt” looking for underscores and strikethroughs. This treasure hunt includes character-by-character scrutiny of entire sections of ADS in which nothing was intended to change. To find the single change on page 3 of a 7-page ADS, the USPTO employee is forced to scrutinize the entirety of pages 1-2 and pages 4-7 in case some change is to be found tucked away on one of those six pages.
The list of reasons why this old procedure is ill-conceived goes on. Consider that it is not at all easy to add strikethroughs to a PDF document that already exists. You have to fiddle around with the Acrobat typewriter tool to try to line things up. And then you need to type in the new bib data item, such as the new residence city of the inventor. Yes you can do that with the Acrobat typewriter tool, but only if you can find room on the form. You will probably end up typing new characters on top of a box outline or item of instructions. And then you must underline this new information. This again requires that you fiddle around with the Acrobat typewriter tool to try to line things up. This is a fiddly and error-prone process.
Consider that the USPTO person might overlook or misinterpret a change. Or might miss a portion of an underscore. Or might misinterpret a flyspeck as a strikethrough. All of which means that if the USPTO person does (supposedly) enter the changes, and then mails out a new Filing Receipt, the filer will need to proofread that new Filing Receipt particularly closely to see if all of the changes really did get made. And will need to watch to see whether new errors may have been introduced by the USPTO person.
In summary, the number of cases that were filed before September 16, 2012, and that are still pending now, and that need a bib data change, will be smaller in number with each passing month. But filers still need to know the “old procedure” since it will arise every now and then.
New procedure. Let’s turn now to the “new procedure”, which is applicable to any application having a filing date on or after September 16, 2012, that needs a bib data change. The first thing to appreciate is that with very few exceptions, such an application did already have an ADS filed. In other words, the document that you are about to file to bring about the bib data change will nearly always be at least the second ADS filed in the case.
The second thing to appreciate is that if you entitle this document “Supplemental ADS”, you will give some momentary glee to a USPTO employee who will assume that you are wrongly attempting to use the old procedure. Even if your document is otherwise in complete compliance with the “new procedure”, the mere presence of the word “supplemental” will likely result in the USPTO employee refusing to enter the changes.
Let’s pause for a moment and ask ourselves, if the smartest people at the USPTO were to get together with the smartest filers to design the smartest possible “new procedure”, what would this procedure look like? And of course the answer is, the smartest possible new procedure would be that the document filed with the USPTO would not say anything at all about the bib data that remains unchanged. The document would only list the items that are to be changed. Such a procedure would save the valuable time of the filer, who does not need to construct an entire ADS (as under the old procedure) most of which is stuff that does not need to change. And such a procedure would save the valuable time of the USPTO employee, who does not need to go on a “treasure hunt” looking for the flyspecks on the page that might or might not indicate a strikethrough of a character that needs to be deleted.
In a moment I will tell you that the USPTO actually did adopt this smartest possible procedure, while leaving in place that the old ill-conceived procedure could still be followed if a filer were to choose to do so. And a moment later I will tell you that the USPTO actually refuses to follow this smartest possible procedure and actually tells filers to follow the old ill-conceived procedure. I am not making this up.
First let’s see this smartest possible procedure. The smart procedure is tied to the seven sections that might appear in an ADS:
- Inventor information
- Correspondence information
- Application information
- Representative information
- Domestic benefit information
- Foreign priority information
- Applicant information
Under this smart procedure, which you can see in 37 CFR 1.76, if you are making a change to only one of these seven sections, you can omit the other six sections from your document. You need only list the particular section (or sections, but nearly always it is only one section) in which a bib data change is to be made. Within that section, you reproduce everything that was made of record previously about that section, and then with strikethroughs and underscores you show the desired changes.
It is easy to see the many ways that this procedure is smart. From the USPTO’s point of view, this procedure permits the USPTO employee to skip over the six sections in which no changes are being made. It permits the USPTO employee to focus on the one section where a change is being made. From the filer’s point of view, this permits the filer to create the document in a word processor, in which it is easy to underline things and easy to strike through things.
From the filer’s point of view, this smart procedure reduces the risk that the USPTO person will screw up the updating process. The error rate will be smaller. The filer will still have no choice but to proofread the new Filing Receipt carefully, but this smart procedure will have reduced the number of USPTO errors and thus the number of followup requests for USPTO to correct its previous mistakes.
The USPTO promulgated the Final Rule spelling out the “new procedure” (the procedure to be followed for applications with a filing date on or after September 16, 2012) on August 14, 2012. The “new procedure” does set forth this smart procedure. But it also says that a filer could, if desired, follow what amounts to most of the old procedure, submitting the entirety of the previous ADS and offering the usual treasure hunt to try to find changes.
As I say, when the USPTO promulgated its final rule on August 14, 2012 for the “new procedure”, the USPTO did include the “smart procedure”. Where, you might wonder, did this “smart procedure” come from? The answer is, the AIPLA devised this smart procedure and recommended it in AIPLA’s comment dated March 5, 2012 to USPTO’s rulemaking on this subject. You can see AIPLA’s comment here. Here are some of the things that AIPLA said in its comment:
Often a Supplemental ADS is changing a single word or a single number or a single line of text in one field of one of these seven section headings. Therefore, it is very burdensome to require that the applicant reproduce the other six section headings, along with the entire recitation of data within each of the other six section headings. This requirement needs to be eliminated. Most Supplemental ADSs are expected to be less than one page in length.
It should be appreciated that if this comment is adopted, not only would its adoption save enormous amounts of time and effort for applicants, but it would also save enormous amounts of time and effort for Office personnel who would be saved from having to waste time scouring six other section headings, and six other sets of data, to look to see if any changes are being indicated. Office personnel would only need to look at a Supplemental ADS that, typically, would be less than one page in length.
The USPTO did adopt this comment, in part. USPTO’s final rule of August 14, 2012 said that filers were permitted to update bib data by means of an ADS that lists only the section or sections in which changes are to be made.
Our firm regularly carries out bib data updates in this way. We create a document entitled “Application Data Sheet” in our word processor. In the word processor document, we omit the six sections and section headings for the sections in which no changes are to be made. In the word processor document, we list only the section heading and the section in which changes are to be made.
And time and time again, USPTO personnel have refused to enter such bib data changes. Time and time again, we have been unable to actually reach such USPTO personnel to talk on the telephone. Time and time again, we have been forced to file a petition asking that the USPTO person be directed to enter the bib data changes. Here is a typical sequence of events:
- November 10, 2014 – we file a (smart procedure) one-page ADS to update an item of bib data
- February 24, 2015 – someone named “ttran” (no full name, no telephone number) refuses to enter the updated bib data
- March 2015 – unsuccessful efforts to reach “ttran” or any other cooperative person in the Office of Data Management
- April 8, 2015 — we file a Petition asking that “ttran” be directed to enter the bib data update
- November 10, 2015 — Office of Patent Petitions grants our petition
Note that it took exactly a year to force the USPTO to follow its own rule and to update the bib data. Note that it took seven months for the Office of Patent Petitions to do its job.
Here is part of what the Petitions person said in the letter granting the petition.
On November 10, 2014, a corrected Application Data Sheet (ADS) was filed. On
February 24, 2015, the Office mailed a Response to Request for Corrected Filing Receipt, stating that the ADS submitted on November 10, 2014, did not contain the entire section containing the desired changes.
On April 8, 2015, the subject petition was filed. Petitioner asserts that the ADS filed on November 10, 2014 did in fact contain the entire section containing the desired changes.
37 CFR 1.76 states, in pertinent part:
(b)(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. […]
(c )(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.
Upon review, the ADS filed on November 10, 2014 is marked as an ADS, includes the section heading “Foreign priority information” as required by § l.76(b )(6) and the application number, country or intellectual property authority, and the filing date of the foreign application. Moreover, the information being changed is indicated by underlining and strike-through. As such, the requirements of 37 CFR l.76 have been met.
The petition is granted.
Nevertheless, in future filings, the Office recommends that Form PTO/AIA/14 be used when submitting a corrected or updated ADS.
Yes, astonishingly the Petition person recommends that in the future, the smart procedure not be employed. The Petitions person recommends that the bad procedure be followed, the procedure in which all seven sections are provided, the procedure in which the USPTO person must go hunting through all seven sections to try to find what is to be changed and what is not to be changed.