Consequences of an unsigned (or incorrectly signed) ADS

What are the consequences of filing a US patent application with an Application Data Sheet (“ADS”) that was unsigned, or incorrectly signed?  Many, many bad things can flow from this.  The bad things can cascade and it can take months of tedious step-by-step filings to get things straightened out.

The first thing that a filer needs to realize is that there are people at the USPTO whose entire job description seems to be nit-picking ADSs.  One particular area of nit-picking is the signature area.  If an ADS is not signed, then the ADS will not count as an ADS, but instead will be treated as a mere “transmittal letter”.  37 CFR § 1.76(e) says:

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.

So one way to fail with an ADS is to fail to sign it.

But another way to fail with an ADS is to fail to sign it correctly. 

Suppose you choose to employ a virgule signature pursuant to 37 CFR § 1.4.  You could fail by failing to provide one of the two virgules (forward slashes) required by Rule 4.  It might happen if you mistakenly include some character between the two slashes that is a forbidden character, for example an asterisk or a dollar sign. It might happen if you fail to include at least one letter or Arabic numeral.  More subtly, you could fail because there is handwriting somewhere on the page.  A virgule signature is permitted only if there is no handwriting anywhere else on the page.  If you are signing as a practitioner, you might fail to provide your registration number accurately.

Still another way to fail with a signature on an ADS is to fail to sign “in compliance with 37 CFR § 1.33(b)”.  So for example if a paper is being submitted “on behalf of a juristic entity” then it cannot merely be signed by the applicant, but instead must be signed by “a patent practitioner”.

Any of these lapses will result, one suspects, in the USPTO employee being one step closer to a nice year-end bonus, given the enthusiasm with which real or imagined flaws in ADS signatures are found.  (My standard virgule signature for example is “/s/” and the nit-pickers very often bounce it, wrongly thinking that a single character is somehow not good enough to satisfy Rule 4.)  

Once the nit-picker has decided to bounce the ADS, there is a cascade effect.

Any and all information that had auto-loaded into USPTO’s systems from the ADS on filing day gets deleted out of USPTO’s systems.   This means that you are no longer in the position of having a priority claim in your case.  This means your continuity data is gone.  

But most critically, this means that the non-inventor applicant that you identified in that ADS on filing day is deleted from the USPTO system.  The “applicant” reverts to the default namely to the inventor list.

Still another way to screw this up is to do everything right in the ADS except failing to check one of the boxes that explains why the non-inventor applicant is entitled to be the non-inventor applicant.  In which case the “applicant” reverts to the default namely to the inventor list.

With any of these screwups, what follows is that the Power of Attorney that you included on filing day, the Power of Attorney that was signed by the corporate applicant, gets bounced, because it was not signed by the applicant of record (that is, it was not signed by all five of your inventors).

Can you just sign the ADS and hand it in again, this time expecting it to work?  Well, no, because at this stage the ADS that you hand in has to use strikethroughs and underscores to show the changes relative to the previous ADS that you filed.  But wait, you say, the USPTO took the position that the previous document was not an ADS at all, it was a mere cover letter!  So what?  Still the USPTO says you must use strikethroughs and underscores to show the changes relative to that previous document that was sort of an ADS and yet was not an ADS.

Okay, so you mark up your ADS with strikethroughs and underscores, from top to bottom, basically underlining almost everything in the ADS, and you sign it.  Will it work?

Only sort of.

It will work in the sense that it will get your priority claim and continuity data into the case.

But it will not work for getting your non-inventor applicant recognized by the USPTO.

The problem is that now you must hand in a 37 CFR § 3.73 statement with that ADS if you want it to work for getting your non-inventor applicant recognized by the USPTO.

Which of course you cannot do until you get your assignments recorded at the USPTO.

Which of course you cannot do until you get your assignments e-filed at the USPTO.

Which you cannot do until you get your assignments signed.

So now it is trench warfare.

• Get assignments signed.
• E-file the assignments in EPAS.
• Get the precious reel and frame numbers.
• Prepare a 37 CFR § 3.73 statement, prepare a strike-through-and-underscore supplemental ADS for the non-inventor applicant, e-file them.
• Wait.
• Assuming USPTO ignores the supplemental ADS, which often happens, then prepare and file a Request for a Corrected Filing Receipt, including a marked-up Filing Receipt showing the non-inventor applicant with underscores.
• Eventually you are holding in your hand an updated Filing Receipt listing your non-inventor applicant.  Now hand in your Power of Attorney.  
• Wait.
• Assuming USPTO ignores the POA, which sometimes happens, then make a phone call to the Application Assistance Unit.
• Eventually you are holding in your hand the N570 which says the USPTO recognizes the Power of Attorney.

All of this because somehow your ADS did not get signed, or did not get signed correctly, or got signed correctly but not by a patent practitioner.  

Non-publication requests.  Alert reader Steve Melvin points out that yet another very unhappy result that can flow from an ADS turning out not to be signed, or turning out not to be signed correctly, or turning out not to be signed by a patent practitioner, is that if one of the goals of the ADS was to request non-publication, then the non-pub request will fail.  This then means that to accomplish non-pub, one must file a continuation (in which non-pub gets requested successfully) and one must abandon the parent case.

Clearly a practice tip is to make sure we complete and sign our ADSs properly.

Wouldn’t it be nice if Patentcenter were to check to see if you checked at least one of the boxes that explains why your non-inventor applicant is entitled to be the non-inventor applicant?  But it doesn’t.   Wouldn’t it be nice if Patentcenter were to check to see if your ADS was actually signed?  But it doesn’t, not until many clicks and screens later.