The domestic priority box for 35 U.S.C. 119(e) benefit claims was removed from the declaration forms because it is not required by the statutes or by the related rules to state a domestic priority claim under 35 U.S.C. 119(e) in the declaration. The presence of this box created confusion, and may have caused unnecessary objections to declarations when this box was not filled out and applicant was indeed claiming domestic priority to provisional application(s). To claim domestic priority under 35 U.S.C. 119(e), applicant must comply with 37 CFR 1.78 which requires, in part, that the priority claim information be in either the first line of the specification or in an application data sheet.

Currently, the definitions are listed in a summary document posted at http://www.uspto.gov/web/forms/kindcodesum.html. In addition, the definitions appear in an Official Gazette Notice, 1243 OG 41 (Feb. 13, 2001). The use of these kind codes for U.S. patent documents is suggested when citing references for an Information Disclosure Statement (IDS) on a PTO-1449 or equivalent (e.g. PTO/SB/08) but is not required.

The check box was removed because a new claim for small entity status must be signed by one of the parties listed in 37 CFR 1.27(c)(2) whereas the form itself may be signed by other parties not listed in 37 CFR 1.27(c)(2). This conflict in requirements resulted in confusion about whether the form was signed by the proper parties if a claim to small entity status was made. Therefore, the check box for small entity status was removed from the PTO/SB/45.

To either (1) claim small entity status or (2) to notify the USPTO of the loss of entitlement to small entity status, applicant must submit an appropriate statement in a separate letter signed by the one of the required parties. As mentioned above, a written assertion of small entity status must be signed by a party listed in 37 CFR 1.27(c)(2). A notification of the loss of entitlement to small entity status must be signed by a party listed in 37 CFR 1.33(b).

Q4. What is an Application Data Sheet (ADS)? Are applicants required to use it?

An Application Data Sheet (ADS) is a sheet or sheets of paper which contain bibliographic information (e.g., correspondence address, applicant information, representative information, and priority information) arranged in a certain format. The information provided in the ADS is presently being provided in multiple parts of patent applications. With the ADS, the information will all be in a centralized place. Therefore, if information is provided in an ADS, it may not need to be provided elsewhere (e.g. in an oath or declaration). The ADS, when filed, is a part of the patent application.

Use of an ADS is voluntary. See 37 CFR 1.76. An ADS can be used in provisional and nonprovisional applications. Further, an ADS can be completed when preparing an application for filing via the Electronic Filing System (EFS). For more complete information on ADS, see "Patent Application Bibliographic Data Entry Format To Create An Application Data Sheet " at http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html.

Q5. Why are there are two new declaration forms, PTO/SB/1A and 3A?

The PTO/SB/1A is a declaration under 37 CFR 1.63 for utility or design applications used in combination with an Application Data Sheet (ADS). Likewise, the PTO/SB/3A is a declaration under 37 CFR 1.63 for plant applications used in combination with an ADS. These declaration forms do not include spaces to include information that could be placed in an ADS, such as the mailing address and residence of the applicant(s) and any foreign priority data. See 37 CFR 1.63(c). Therefore, if the applicant(s) chooses to submit his, her or their declaration, as required by 37 CFR 1.63, using these forms or their equivalents, the applicant must provide an ADS with at least his, her or their mailing address(es) and residence(s), if different from the mailing address, and any foreign priority data as required by 37 CFR 1.63(c).

To appoint a power of attorney or authorize an agent to act for you, you can use form PTO/SB/81 "Power of Attorney or Authorization of Agent" (also on the USPTO's printable forms website). The power of the attorney portion was removed from the declaration forms because while all the inventors must sign a declaration form, it is not always required that all the inventors sign a power of attorney. For example, it is acceptable to have the assignee(s) appoint the power of attorney. See 37 CFR 3.71. The combined declaration and power of attorney forms will still be accepted by the Office.

Q7. I noticed that the declaration forms no longer have a box to claim domestic priority under 35 U.S.C. 120. Why was this deleted from the forms?

The domestic priority box was removed from the declaration forms because it is not required by the statutes or by the related rules to state a domestic priority claim in the declaration. The presence of this box created confusion, and may have caused unnecessary objections to declarations when this box was not filled out and applicant was indeed claiming domestic priority to another application. To claim domestic priority under 35 U.S.C. 120, applicant must comply with 37 CFR 1.78 which requires, in part, that the priority claim information be in either the first line of the specification or in an application data sheet.

Q8. Why were the small entity forms (PTO/SB/9-12) deleted from the website and how do I now claim small entity status?

The small entity forms were deleted because effective September 8, 2000, small entity status can be established at any time by a simple written assertion of entitlement to small entity status. Specific forms, like PTO/SB/9-12, are no longer required but the Office will still accept them as a written assertion of entitlement to small entity status. The Office will liberally construe any written reference to small entity status to be a request for small entity status. Several PTO forms, such as the transmittal forms (PTO/SB/5,17,21,50 and 56) and the provisional cover sheet (PTO/SB/16), have been modified to include a box which can be checked to establish small entity status. For more information, see the Manual of Patent Examining Procedure (MPEP), sections 509.02 and 509.03.

Q9. What are some examples of certification statements found on Office forms?

The following examples of certification statements are taken from Changes To Facilitate Electronic Filing of Patent Correspondence, Final rule (23Jan2007), 72 Fed. Reg. 2770 at 2772:

For example, the following statements are certification statements on an oath or declaration form PTO/SB/01:
(1) ‘‘I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought on the invention entitled;’’
(2) ‘‘I hereby state that I have reviewed and understand the contents of the above-identified specification, including the claims, as amended by any amendment specifically referred to above;’’
(3) ‘‘I acknowledge the duty to disclose information which is material to patentability as defined in 37 CFR 1.56, including for continuation-in-part applications, material information which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application;’’ and
(4) ‘‘I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.’’ As another example, the following statement is a certification on the nonpublication request form PTO/ SB/35: ‘‘I hereby certify that the invention disclosed in the attached application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing.’’

KEY: =online business system =fees =forms=help =laws/regulations =definition (glossary)

Is there a question about what the USPTO can or cannot do that you cannot find an answer for? Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov. While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website.