Scenario: A continuation application was filed with the USPTO under 35 USC §120, along with an application data sheet (“ADS”). In the “Domestic Benefit/National Stage Information” field (“domestic benefit field”) of the ADS, all required fields were completed except that the serial number of the parent application was inadvertently omitted (the parent status, continuity type of the child and filing date of the parent were all included on the ADS at filing). Predictably, the filing receipt received from the USPTO included no recognition of the domestic benefit claim. After the error was discovered, a corrected ADS was filed according to 37 CFR §1.76(c), on which the initially omitted parent serial number was included with underlining pursuant to 37 CFR §1.76(c)(2). The parent status, continuity type of the child and the filing date of the parent were not included on the corrected ADS, since these were provided on the initially-filed ADS. The USPTO thereafter refused to recognize the domestic benefit claim, indicating that “an ADS must be properly signed and properly marked up relative to the current information of record”, and stating that “[i]nformation of record can generally be found on the latest filing receipt.” (emphasis added)
In this situation, the USPTO did not enter into the USPTO record any information pertaining to the domestic benefit field of the continuation application, even though the parent status, continuity type of the child and the parent filing date were all present in the original ADS, and the filing receipt subsequently issued by the USPTO reflected this. Therefore, the corrected ADS should have included, in underlining, all of this previously supplied domestic benefit information as well as the inadvertently omitted information.
Tip: If you discover that information was inadvertently omitted on an ADS at filing, be sure to check your filing receipt carefully and underline all information not reflected on your filing receipt on the corrected ADS--even if you previously supplied the information on an earlier ADS. There are deadlines for making domestic (and foreign) priority claims in a U.S. patent application, and if an omission of the type indicated above is not discovered early, you could find yourself having to file a petition under 37 CFR §1.78(e) and having to pay a hefty petition fee in order to have the USPTO recognize your priority claim.
Tip: If you discover that information was inadvertently omitted on an ADS at filing, be sure to check your filing receipt carefully and underline all information not reflected on your filing receipt on the corrected ADS--even if you previously supplied the information on an earlier ADS. There are deadlines for making domestic (and foreign) priority claims in a U.S. patent application, and if an omission of the type indicated above is not discovered early, you could find yourself having to file a petition under 37 CFR §1.78(e) and having to pay a hefty petition fee in order to have the USPTO recognize your priority claim.
