[Patentpractice] Priority Application - typo in ADS

[Peter Medley]

I agree with Randall. I think that you are likely going to have to pay the hefty fee under 37 CFR § 1.55(e).

In a similar situation, we filed a corrected ADS to try to correct a mistake in the originally filed ADS. But we were denied and forced to file a Petition under 37 CFR § 1.55(e). The PCT Help Desk confirmed that a Petition under 37 CFR § 1.55(e) was the only way to fix the error in our ADS.

I would review the MPEP because it is more forgiving than what 37 CFR § 1.55(d)(1) suggests. But I don’t think it allows correcting a transposition of numbers in the application number. MPEP § 211.03<https://www.uspto.gov/web/offices/pac/mpep/s211.html#ch200_d1ff71_24d33_c> explains:

A petition under 37 CFR 1.78<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#aia_d0e320662> and the petition fee would not be required for correcting a timely submitted benefit claim for the following situations:
(A) Changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”);
(B) Changing the filing date of a prior-filed nonprovisional or provisional application; and
(C) Changing a benefit claim of a prior-filed provisional application under 35 U.S.C. 120<https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e303023313> (e.g., “This application is a continuation of prior-filed provisional application No. ---”) to a benefit claim of the same provisional application under 35 U.S.C. 119(e)<https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e302951> (e.g., “This application claims the benefit of prior-filed provisional application No. ---”) during the pendency of the later-filed application. Note, however: If the later-filed application has issued as a patent, the correction cannot be made by a certificate of correction and would not be effective in a reissue application because the term of a patent is measured from the prior application’s filing date and removing the benefit claim under 35 U.S.C. 120<https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e303023313>, 121<https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e303040912>, 365(c)<https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e307053>, or 386(c)<https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#al_d225a2_29a9c_1b3> would have the effect of lengthening the term of the patent.

We had the right number and filing date, but we put it in the wrong box in the ADS, which I thought was similar to changing a benefit claim to a provisional application under 35 U.S.C. 120 to under 35 U.S.C. 119(e). But the AAU disagreed.

We didn’t file a petition under 37 CFR § 1.183 for the reasons that Randall provided.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Randall Svihla via Patentpractice
Sent: Thursday, October 23, 2025 4:06 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com>
Subject: Re: [Patentpractice] Priority Application - typo in ADS

Hi

I have never done this.

The problem I see with filing a Petition Under 37 CFR 1.181 is that 37 CFR 1.55(d)(1) states as follows:

(d) Time for filing priority claim—
(1) Application under 35 U.S.C. 111(a).  The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section.  The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

What you would actually be asking them to do in the Petition Under 37 CFR 1.181 is to waive the underlined requirements of 37 CFR 1.55(d).  The appropriate petition for this is a Petition Under 37 CFR 1.183:

§ 1.183 Suspension of rules.
In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director's designee, sua sponte, or on petition of the interested party, subject to such other requirements as may be imposed.  Any petition under this section must be accompanied by the petition fee set forth in § 1.17(f).

However, you will have a hard time meeting the "[i]n an extraordinary situation, when justice requires" standard.  They will say you already have a remedy--filing a Petition to Accept Unintentionally Delayed Claim for Priority Under 37 CFR 1.55(e).  The fact that you do not want to pay the $3,000 large-entity petition fee ($1,200 small-entity) is immaterial.

Good luck.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Thursday, October 23, 2025 3:23 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Subject: [Patentpractice] Priority Application - typo in ADS

A listserv member asks to post anonymously.

Hi

Has anyone encountered an issue along these lines ...

Typographical error (transposition of numbers) in a foreign priority document listed on an ADS; the priority claim in spec is correct (thereby confirming applicant's intention).

Application was filed more than 2 years ago but is before allowance.

If you have, have you had the priority corrected or clarified without filing a Petition to accept a delayed priority claim?  For example, have you filed a miscellaneous petition to the Director under 37 CFR 1.181 explaining the situation and had it successfully remedied?  Basically - have you done this without throwing thousands of dollars at the Office to fix it?


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