Figuring out whether to check the box in your ADS

 

Watch this recording of a webinar to learn whether to "check the box" in your Application Data Sheet.

Okay, you are getting ready to file a patent application in the USPTO. You are filling out the Application Data Sheet (Form PTO/AIA/14) or you are reviewing an ADS prepared by someone whose work you are supervising. You reach this place in the ADS:

Should you check the box? Should you refrain from checking the box? What are the consequences of getting the answer wrong? Is it malpractice to get the answer wrong? What will happen years from now in litigation if you check the box? What will happen years from now in litigation if you refrain from checking the box? Will the Office of Enrollment and Discipline consider taking away your license as a registered practitioner if you get the answer wrong?

If you are not sure of the answers to one or more of these questions, then you may wish to attend this webinar.

Then you may want to watch this recording of a webinar to learn about some of the differences between the "old" 35 USC § 102 and the "new" 35 USC § 102. (The box that you check or don't check will affect whether the Examiner uses the new or old section 102 when examining your patent application.)

We discuss a variety of filing scenarios:

  • PCT filed before March 16, 2013, and now you are entering the US national phase, or filing a bypass continuation. How will the March 16 changes affect your choice of which path to use?
  • Provisional application filed before March 16, 2013, and now you are filing a US non-provisional application. How can you control whether the old or new 102 will apply?
  • Foreign application filed before March 16, 2013, and now you are filing a US application that makes a Paris Convention priority claim. How do you know whether or not to check the box?
  • You are filing a US continuation or a divisional application claiming domestic benefit from a US non-provisional application filed before March 16, 2013. What can you do to eliminate the risk that years from now in litigation someone will claim you tricked the patent office by refraining from checking the box?

The faculty. Your professor is Carl Oppedahl, a partner in OPLF. Carl previously served as the chair of the AIPLA PCT Issues Committee and is now a member of the Board of Directors of AIPLA. He has spent more than twenty years writing and prosecuting patent applications for clients. He serves as an adjunct professor at University of Denver law school, teaching Patent Prosecution.

Carl Oppedahl

Here's what some attendees had to say about this webinar taught by Professor Oppedahl:

  • "Excellent. A lot more to the ads box than I thought." E.W. Campbell, CA
  • "Very informative. Very well done." C.S. Fairfax, VA
  • "Very informative and provided useful information." R.O. Concord, NH
  • "Interesting info. I did not realize before that this box had so much potential for future problems" R.K. Manchester, NH
  • "Great, very good information, very helpful." R.F. North Little Rock, AR
  • "Excellent information, best practices were very helpful" G.S. San Carlos, CA
  • "Very good presentation with clear explanations, many interesting examples." R.W. Austin, TX

CLE accreditation?

CLE accreditation has been approved for California for 1 credit.

Format.

The webinar is about 1 hour and 33 minutes in duration.  After your purchase you will receive an email message with a link that permits you to download a "zip" file of about 87 megabytes.  Inside the zip file are:

  • an MP4 audiovisual file, about 1 hour and 33 minutes in duration
  • the PDF study materials, including:
    • 65 presentation slides
    • copies of the Federal Register information that were discussed
    • a uniform certificate of attendance for CLE purposes

 

Figuring out whether to check the box in your ADS
  • Item #: 97
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