[Patentpractice] Has USPTO stopped referring to ADS for 371 applications?

[Erin Geraghty]

When something has changed during the pendency of the PCT application via 92bis, we always provide a courtesy copy of the IB306 indicating the change when entering the national stage.  This has saved a lot of problems.

When they have missed a change and we have to request a corrected filing receipt, we prepare the corrected ADS based on the most recent filing receipt.  For example,   if the inventor's name appears on the filing receipt as Smith, but the ADS properly indicated it was Brown, our corrected ADS would have Smith Brown.



Regards,
Erin D. Geraghty
Office Manager
Browdy and Neimark, PLLC
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Lily Rathbone via Patentpractice
Sent: Thursday, December 21, 2023 12:26 PM
To: patentpractice at oppedahl-lists.com
Cc: Lily Rathbone <LRathbone at sheppardmullin.com>
Subject: [Patentpractice] Has USPTO stopped referring to ADS for 371 applications?


I would love to know whether any pattern has been observed of USPTO ignoring data provided on ADS at 371 filings, and I have several questions.



  *   Have you experienced any evidence suggesting that, at 371 filings, the USPTO has changed its practice of relying on the ADS for application information?



  *   At a 371 filing, what have you found to be the best way to present to the USPTO a client's intent to make some application update that is not yet of record at WIPO?



  *   What is the best way to present to the USPTO, at a 371 filing, any update that was made at WIPO to a published PCT application?



Earlier this year we filed a 371 for a client which had filed a request 11 months earlier to update the applicant name at the PCT stage (about a month after client had filed its PCT publication)

PCT accepted the applicant name change and updated its database in mid 2022.



While the published PCT application has the old client name, WIPO's bibliographical page shows the new/updated applicant name.



The new applicant name was correctly used in our ADS filed with the 371.



The USPTO, however, still pulled the old applicant name out of the published PCT, and used the old applicant name on the filing receipt we received this week. Why? Has it changed its practice>



  *   To make the correction, in addition to the marked-up filing receipt and perhaps a copy of the ADS as filed, what else ought we to file?

Lily Rathbone
SheppardMullin | Silicon Valley
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