This is about a minor point in how the USPTO processes new applications that has bothered me on occasion.
Since the adoption of the AIA, US patent applicants are required to file an “Application Data Sheet” in non-provisional applications. Basically this is a way for the USPTO to be provided with information in a consistent format. Although applicants can make up their own ADSes, the USPTO provides an incentive to use its own fillable pdf ADS form, by having its computers automatically scrape the data from those forms and automatically populating its own databases.
There are many problems that arise with the use of the ADS and the USPTO’s inability to clearly explain to applicants what data is missing when the USPTO believes an ADS has been improperly or incompletely filled in, but today I want to focus on just one of these, and really a minor one at that.
One of the data fields that’s included on an ADS is the field for benefit claims to earlier US applications. So if, for example, you’re filing a new application and you want to claim the benefit of a chain of earlier applications, you not only can but you must indicate that relationship in the ADS in order for the USPTO to recognize the benefit claim: you indicate that the present application claims the benefit of application no. WWWWWW, which was filed on date XXX and is still pending, which claims the benefit of application no YYYYYY, which was filed on date ZZZ and is now patent no. NNNNNNN.
Now suppose that you’re filing an ADS with a new application, which is a continuation of an allowed application in which you have paid the issue fee and will issue in a few days as a patent. Obviously, the continuation needs to be filed while the parent is still pending, before the patent has issued. So in the ADS, you indicate the status of the parent application as “pending”. Then, the following week, the parent patent issues. A few weeks after that, you get your application filing receipt, which lists the benefit claim to the parent case. And you see that although the parent case is properly listed (application number, filing date, and patent number), there’s an asterisk next to the parent case, with the notation, “Data provided by applicant is not consistent with PTO records”. See the picture below.
The first time I saw this, I thought that perhaps there had been a mistake in the ADS. Only after talking to people at the USPTO did I learn that there was no mistake: the issue was that the ADS indicated the parent case as “pending”, and in the interim its status had changed to “patented”. Hence the “discrepancy” between the applicant-provided data and that in the USPTO’s records. When I asked the USPTO person why they didn’t just fix their software to avoid giving such notices in these situations, I was told that the person in charge of that particular issue wanted it that way.
This particular notification was annoying not only because, at least in my experience, it was always wrong, and not only because it necessitated checking to make sure that the data printed on the filing receipt was indeed correct, but because seeing this would cause some applicants’ stomachs to flutter, necessitating an explanation as to what had happened.
Evidently this particular problem has now been taken care of, at least if recently-received filing receipts are any indication: we’re no longer getting the “Data provided by applicant is not consistent with PTO records” notice when the parent case issues after the initial submission of the ADS.
It’s a (very) small step, but it’s still progress.