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<p>What you say is quite correct. One must preserve locally a copy
of the aux-PDF that was uploaded. The USPTO cannot be trusted to
preserve it bit-for-bit.</p>
<p>One might consider uploading the aux-PDF into SCORE, as a sort of
offsite backup. Call it a non-BW drawing. On present
(undocumented) practice, the USPTO does preserve such files
bit-for-bit. There is some chance, however small, that the USPTO
might have the self-control to avoid betraying the applicant by
deleting it or by tampering with it.<br>
</p>
<div class="moz-cite-prefix">On 12/29/2023 5:38 PM, Rick Neifeld via
Patentpractice wrote:<br>
</div>
<blockquote type="cite"
cite="mid:20c3e7ec-e11c-42b5-84c2-41d530c869b8@neifeld.com">
<meta http-equiv="Content-Type" content="text/html; charset=UTF-8">
<font face="Times New Roman"><font size="5">I covered this issue
in my talk at the NAPP annual meeting, last year. After rather
exhaustive testing of new nonprovisional utility application
filings using DOCX documents and auxiliary PDFs for the
disclosures, via Patent Center. See, section "III.G Performing
A Pre Filing Review Using The Patent Center-Generated PDF,
Before Filing" in "Avoiding Failed Patent Application Filings,
2023," available from: <a class="moz-txt-link-freetext"
href="https://www.neifeld.com/advidx.html"
moz-do-not-send="true">https://www.neifeld.com/advidx.html</a><br>
<br>
I concluded that the best option for the filer (that means you
and me) is to "retain their<b> uploaded copy of the auxiliary
PDF</b> in their records in association with the EAR. That
will enable the filer to prove the auxiliary PDF in their
records is the auxiliary PDF uploaded to Patent Center at the
time of filing, and therefore prove the content of the filed
disclosure, regardless what the PTO’s version of the auxiliary
PDF shows."<br>
<br>
This is because the EAR's "Digest" for the application's
filing shows the filename of the uploaded auxiliary pdf, and
the SHA-512 hash value for the uploaded auxiliary pdf.
Therefore, the filer can prove at a later date, if it becomes
necessary to correct the PTO's understanding of the filed
disclosure, that the Auxiliary pdf uploaded was in fact
uploaded as part of the "submission" forming the filing of the
application. Because, as we all know, the USPTO's "Documents
and Transactions" does not show the filename of the uploaded
Auxiliary pdf and does not have a file that has the same
SHA-512 hash value as the uploaded auxiliary pdf. (So even if
that putative auxiliary pdf residing in the Documents and
Transactions tab in Patent Center is accurate at the time of
filing, we cannot know if at some point in time after filing
that it has been further changed to become an inaccurate </font></font><font
face="Times New Roman"><font size="5">version of the disclosure
as actually filed.)<br>
<br>
</font></font><font face="Times New Roman"><br>
<br>
</font>
<div class="moz-signature">
<p>Best regards, Rick Neifeld, Ph.D., Patent Attorney<br>
Neifeld IP Law PLLC<br>
9112 Shearman Street, Fairfax VA 22032-1479, United States<br>
Office: 1-7034150012<br>
Mobile: 1-7034470727<br>
Fax: 1-5712810045<br>
Email: <a href="mailto:rneifeld@neifeld.com"
class="moz-txt-link-freetext" moz-do-not-send="true">rneifeld@neifeld.com</a><br>
and <a href="mailto:richardneifeld@gmail.com"
class="moz-txt-link-freetext" moz-do-not-send="true">richardneifeld@gmail.com</a><br>
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class="moz-txt-link-freetext" moz-do-not-send="true">https://neifeld.com/</a><br>
This is a confidential communication of counsel. If you are
not the intended recipient, delete this email and notify the
sender that you did so.</p>
</div>
<div class="moz-cite-prefix">On 12/22/2023 3:26 PM, Neil R. Ormos
via Patentpractice wrote:<br>
</div>
<blockquote type="cite"
cite="mid:alpine.DEB.2.20.2312221214410.18285@nybun.bezbf.bet">
<pre class="moz-quote-pre" wrap="">David Boundy wrote:
</pre>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">[...]
</pre>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">[...]
</pre>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">David Boundy wrote:
</pre>
</blockquote>
</blockquote>
</blockquote>
<blockquote type="cite">
<blockquote type="cite">
<blockquote type="cite">
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">So what are the options for passive aggressive compliance that forces the
PTO to use the PDF just as they always have? [...]
</pre>
</blockquote>
</blockquote>
</blockquote>
</blockquote>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">Here's a thought. Does anyone see a bug that I don't?
</pre>
</blockquote>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">Step 1. File the PDF specification and PDF drawings as a
provisional, just as you always have. Don't pay fees.
</pre>
</blockquote>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">Step 2. An hour later, file your nonprovisional as a "filing by
reference" filing.
</pre>
</blockquote>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">It seems to work under the relevant statute and regulation --
35 U.S.C. *sec 111(c) -- <a class="moz-txt-link-freetext"
href="https://www.law.cornell.edu/uscode/text/35/111"
moz-do-not-send="true">https://www.law.cornell.edu/uscode/text/35/111</a>
37 C.F.R. *sec 1.57(a) -- <a class="moz-txt-link-freetext"
href="https://www.law.cornell.edu/cfr/text/37/1.57"
moz-do-not-send="true">https://www.law.cornell.edu/cfr/text/37/1.57</a>
The Director can then require you to file a spec.
</pre>
</blockquote>
<blockquote type="cite">
<pre class="moz-quote-pre" wrap="">The incremental cost is the time to file the provisional, and the
"late parts" surcharge of sec 1.16(f). I don't see why you can't
avoid the surcharge by filing the spec and drawings with the
non-provisional, even though you click the "filing by reference" box
-- the regulation says that if you BOTH click the "by reference" box
and file the spec and drawings, the "by reference" wins. I don't
think the non-provisional has to claim priority to the provisional
-- all you care about it having it in some office's equivalent of
PAIR so you can "by reference" to it. So you don't have to pay the
fees for the provisional.
</pre>
</blockquote>
<pre class="moz-quote-pre" wrap="">I'm sure you've already thought of these things, but I have a few questions:
1. If you file using the
specification-and-drawings-substituted-by-reference procedure
of Rule 57(a), why doesn't the Rule 16(f) surcharge apply
regardless of whether the spec and drawings are supplied with
the filing?
Rationale: Among the cases to which the surcharge of Rule
16(f) applies is "an application filed by reference to a
previously filed application under Sec. 1.57(a)." That case
is not conditioned on late filing of the specification and
drawings.
2. (a) When you eventually file the specification in the
non-provisional application, what's to stop the Director
from requiring that the specification be filed in DOCX
format?
Rationale: 35 USC 111(c) explicitly authorizes the
director to prescribe "conditions" under which a copy of
the specification and any drawings of the previously
filed application shall be submitted.
(b) Why wouldn't the Director be deemed already to have made
that requirement?
Rationale: Rule 52(a)(5) requires that papers "submitted
electronically to the Office must be formatted and
transmitted in compliance with the USPTO patent
electronic filing system requirements."
(c) If the specification is not submitted in DOCX format,
what's to stop the Director from applying the fine of
Rule 16(u)?
Rationale: Rule 16(u) provides for an "additional fee for
any application [...] where the specification, claims,
and/or abstract does not conform to the USPTO
requirements for submission in DOCX format." Neither the
provisional nor the non-provisional in this scenario
contain a specification that conforms to the DOCX
requirements.
3. Even if no additional fees are due, what are the net savings,
over paying the Rule 16(u) fine, when you consider the time
and professional liability risks?
You have acknowledged the incremental cost for the time to
file the provisional and to file the specification and
drawings in the non-provisional. I think there's some
additional time and effort involved in ensuring that the
provisional and non-provisional submissions are
/correct/--doing two related submissions with more files
being uploaded, etc., increases the risk of error--and so
there's also some incremental professional liability risk.
Plus, the plural submissions have to be reported to the
client with explanation (including any remission of billing).
Even if it's a form letter, you have to remember to include
it and may have to respond to client requests for
clarification.
If you just file in PDF, without the chicane of
incorporation-by-reference-from-a-provisional, and you pay
the Rule 16(u) fine, the professional liability risk is
lower, and the other costs of juggling and reporting plural
submissions are replaced (liquidated?) by the fine, which is
ascertainable in the rule and might be discounted for
small-entity clients.
</pre>
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