USPTO’s new “Corrected Web-based Application Data Sheet”

On November 22 I offered suggestions (see blog post here) as to how USPTO could do better in receiving updated bibliographic data.  I also blogged about what was at that time the Best Practice for updating bib data.

On December 21, USPTO announced its new Corrected Web-based Application Data Sheet functionality.  I will describe it in this post.  I think it will probably be a Best Practice to use this functionality (for the applications for which it may be used) rather than legacy practice.

To use the new Corrected Web-based ADS (“CWBADS”) functionality, you start by figuring out whether your application is eligible for this system.  It will be important to print out and study USPTO’s Quick Start Guide.

First, the candidate application must have been filed on or after September 16, 2012.

Second, 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
  • Reexam
  • Plant
  • Supplemental Exam

Stated differently, your case would have to be one of these types:

  • nonprovisional utility that is not a 371 case
  • reissue
  • design

The application is required to have a Correspondence Address Customer Number (CACN).

Keep in mind that there is a difference between the Power of Attorney Customer Number and the CACN.

The filer is required to be a registered user of EFS-Web and the filer’s cryptographic certificate is required to be associated with the Customer Number that is the CACN.

Having checked that your candidate application is actually eligible for this functionality, go into EFS-Web and click these two radio buttons:

SADS

The new screen that opens is a screen that lets you pick which item or items of bib data you wish to update.  You can click around to pick.  Then you paste in your new bib data.

The screen will require that you provide a virgule signature.

Eventually you finish the web-based form, and you click “continue”.  After checking the form for correctness, you can click “submit”.

Let’s talk briefly about what we wish the functionality would do.  Then we can talk about what the functionality actually does.

What we wish the functionality would do is this:  We wish that it would receive character-based user inputs and auto-load the changes into Palm (and from there into an automatically generated new Filing Receipt).  Or, if not auto-loaded into Palm, at the very least the user inputs would get copied into some approval screen at the USPTO so that a USPTO person could accept the changes with a single mouse click.

Unfortunately that is not what the functionality does.

What really happens is that the functionality creates an image-based PDF file showing changes with strikethroughs and underscores.  This PDF file gets uploaded into IFW and a message gets sent to the USPTO person in charge of bib data changes.  The USPTO person then reads (or misreads, as the case may be) the changes by looking at the image-based PDF file.  The USPTO person then hand-keys the changes into Palm.

This unhappy situation leaves open the possibility of miskeyed information.  A USPTO person could delete the wrong things, or edit the wrong things, or insert something incorrectly.

Even with all of these drawbacks, I believe this functionality is likely to be a Best Practice.  Why?

To see why, we have to compare this functionality with legacy practice.  Legacy practices are:

  1. Finding the previous ADS, and with the typewriter tool of paid-for Acrobat, cobble together all of the strikethroughs and underscores needed to show the adds, changes, or deletions.
  2. Creating a new ADS in one’s word processor, showing only the sections that change and omitting the sections that are not to be changed.

Legacy practice 1 has many drawbacks.  Yes, a USPTO person could delete the wrong things, or edit the wrong things, or insert something incorrectly, just as with the new functionality.  But there are more drawbacks.  This practice requires that a USPTO person go through a treasure hunt, trying to pick out the strikethroughs and underscores.  A strikethrough or underscore could get overlooked.  Or a flyspeck could look like a strikethrough or underscore.

Legacy practice 2 also has drawbacks.  A first drawback is that even if the word processor ADS is fully compliant with 37 CFR 1.76, many USPTO personnel are stubborn and refuse to honor such a word processor ADS.

Each of the legacy practices has the enormous drawback that USPTO personnel seem to take delight in finding real or imagined flaws in the submission.  When a USPTO person finds such a real or imagined flaw, the USPTO person mails a letter to the filer.  The letter never clearly identifies the person, and it is impossible to reach the USPTO person by telephone.  The filer is reduced to a fruitless call to an Application Assistance Unit person who can only guess at the real or imagined flaw.  It is commonplace to have to make at least two ADS submissions to accomplish the desired changes.

The chief advantages to the new functionality are:

  • USPTO personnel will not be stubborn they way they often are with Legacy practice 2.
  • USPTO personnel do not have to go on a treasure hunt looking for the changes.  USPTO personnel are not nearly so likely to overlook something that needs to be changed.
  • The functionality creates all of the strikethroughs and underscores as required by 37 CFR 1.76.  USPTO personnel are not allowed to complain that the strikethroughs and underscores have been done incorrectly, because the USPTO itself created the strikethroughs and underscores.

In practical terms, USPTO is unlikely to bounce an ADS created through this functionality.  Yes, the filer will still have to docket to check for a new Filing Receipt.  When the new Filing Receipt shows up, the filer will still have to proofread the Filing Receipt character by character to make sure that the USPTO person hand-keyed the information without error.

10 thoughts on “USPTO’s new “Corrected Web-based Application Data Sheet”

  1. Pingback: How USPTO could handle bib data changes better - Ant-like Persistence

  2. I had my paralegal look into this. And there’s one glaring problem — similar to all the other types of filings on EFS-Web where you enter information directly on the site (eTerminal Disclaimers, petitions to revive, etc.). And that’s that the attorney has to input his/her signature at the end.

    So, if your paralegal is doing the work, he/she has to call you over to sign. Which is dumb. There should be some way to pre-sign the document, or save your work so that the attorney can then log in and sign later.

  3. I’ve read your blog posts and I’ve read the comments on your list serve regarding changes to an ADS and I don’t understand why everyone is having such problems. Whether it is a simple change of data, a delayed priority claim, or a change to an ADS when and ADS was never filed, the process is quite simple. I’ve done this numerous times in the last few months and I usually have my corrected Filing Receipt in a day or two. In some cases, I even had it the same day.

    The key to success came after talking with the USPTO to get an ADS processed that had been sitting for months. The lady indicated, quite simply, that a mere filing to correct, supplement, or change (whatever wording you choose) the ADS doesn’t trigger the contractors to do anything. If 7 to 10 days has passed, you can call they will notify the contractors to pull it for action. Or, here’s the trick, file a Request for Corrected Filing Receipt along with the ADS which triggers an action for the contractors to do something and you’ll have a corrected Filing Receipt in 1 to 2 days (I’ve had a couple issued the same day).

    I’ve had to file a few delayed priority claims outside of the 16 month window and have had the following results:
    1) I filed the necessary petition, fee, ADS and Request for Corrected Filing Receipt. A communication was sent back regarding my Request for Corrected Filing Receipt telling me I needed to file a Petition (which I had) but then the contractors must have pushed Petitions because even though the petitions timeline dashboard had an expected decision date several months out, I received a decision in about 2 months which was several months earlier than the average time for such petition decisions and my Corrected Filing Receipt arrived a day before the decision was issued.
    2) I filed the necessary petition, fee, ADS and Request for Corrected Filing Receipt. I received my Corrected Filing Receipt in 2 days even though the Petition remains pending. It was a fairly straightforward delayed claim so I guess the FR folks are fairly confident it will be granted and decided to show Petitions how it is supposed to be done. I called Petitions to make sure I really needed to pay the fee when I already had my Corrected Filing Receipt with the proper claim and they assured me it was still required and they would eventually issue their decision. I’m still waiting to see how that comes out.
    3) I filed the necessary petition, fee, ADS but no Request for Corrected Filing Receipt. That was months ago and I suspect, that filing will go through the normal hell that everyone else has been experiencing.

    As for the Web-based ADS. I’ve done only one of these as a test because someone not using the trick had an ADS that has been sitting for months. She called and sought processing and in the meantime, I drafted an online ADS. It creates the red-lined ADS and allows it to be saved for later submission. I saved it, printed it out, had the attorney sign off at his leisure, then filed it. However, when I went to file it, the contractors had responded to the call of the other paralegal and changed the data so my saved ADS actually changed in response and removed the redlining from the item that had been changed. I went ahead and filed it with some additional minor changes and did not file a Request for Corrected Filing Receipt as a test to see if it would be automatically processed in a couple of days. Sure enough, it did not trigger the contractors to do anything and it has been several weeks and still no new Filing Receipt.

    So, to sum up, either use the web-based ADS and file a Request for Corrected Filing Receipt with it or use a Word based document with redlining, including only the sections that need to be changed, making sure to include a signature on the ADS (otherwise it’s just a transmittal) and file it with a Request for Corrected Filing Receipt.

    I’ve had to follow some sub par work at a new job and have had to process more than a dozen of these. I started with the calls and got all ADSs that had been sitting processed. Then I started filing new corrected ADSs. If I file early in the day, I have the corrected FR by the end of the day. It’s been like clockwork once I figured out the system.

  4. Carl, did you say that the automatically generated ADS has the changes underlined, and the carry-over material not underlined? So the PTO’s machine-generated ADS doesn’t fit the human-implemented-but-differeing-from-the-written-regulation-underline-everything “rules” we’ve been working under for several years?

    Why am I so skeptical?

    • What I said was that the supplemental ADS format generated by the EFS-Web system is a format which the nit-pickers at USPTO are presumably not permitted to nit-pick. The point being that since the USPTO system (not the filer) picks what to strike through and what to underscore, the filer cannot be blamed if there is some real or imagined flaw in the formatting.

  5. Pingback: Trap for the unwary - a new patent Filing Receipt after a Notice of Allowance - Ant-like Persistence

  6. Pingback: Trap for the unwary - a new patent Filing Receipt after a Notice of Allowance - Ant-like Persistence

  7. Over the past few years, I made many requests to change the ADS and have experienced similar frustrations as the original poster, Oppedahl. Here are my conclusions based on the last 12 ADS change requests: Each reviewer at the US PTO has a different set of rules for accepting updates via changes to the ADS. Some reviewers accept changes made on a Word document; some will not. Some reviewers require that you submit an actual ADS form with the changes shown on the form (i.e., underline and strike thru). Some reviewers require you file two ADSs: one showing markups and one clean-copy. I have called the office half a dozen times and spoken directly to the reviewers and gotten different answers for each reviewer. At one point I had to keep a log of what each reviewer wanted so I knew her personal requirements. Each time an ADS is rejected, the reviewers cut-n-paste a paragraph that quotes 37 CFR 1.77(c). Even if you’re corrected ADS complies, do not waste your time calling them and explaining how your ADS is fully compliant. You will not convince the reviewer she made an error.You will never win an argument regarding the law. Instead, ask her “How would you like to see the changes made on the filing?” Be polite and thank her for her time. This will help expedite the process and get your updates entered into the system.

    My advise: Do not submit a corrected ADS using the traditional/legacy practice as you risk being unable to comply with particular requirements of a specific reviewer. Use the EFS Web automated process explained above by poster Oppedahl.

    Always remember: A phone call to the reviewer and politeness over the phone can often help solve your problem regardless of whether your filings were technically correct per the law.

    Thanks Oppedahl for taking the time for the post.

  8. As of 2019, the corrected ADS generated by the system is presented to PTO workers in a two-column format, with updated information appearing in the second column. This makes it very easy to find the changes, although they evidently still need to be keyed in manually. Yes, it’s still a ridiculous way of doing things, but evidently data, once entered, is not so easily altered – at least, not automatically.

  9. Pingback: Patentcenter Corrected ADS is broken in at least three ways - Ant-like Persistence

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