[Patentcenter] Another Docx Horror Story

Sun Apr 21 12:55:18 EDT 2024

Andrew -- Can you give me whatever information you can, and consent to use
this as an example for this comment letter?  Thanks

Everyone else -- I set an email last evening (Sat 4/20 at 8:49PM eastern,
copied below) about a notice-and-comment period this week.  I need
examples, immediately (I am starting the letter today, probably finish
Monday.  Sorry to be so behind the curve -- I was up to eyeballs on a case
set for trial next week, and it settled last week. ).   How are DOCX,
Patent Center, the stealth amendment to the MPEP, and the goofy "lower case
only" rule screwing with you?

Thanks

On Sun, Apr 21, 2024 at 12:20 PM Andrew Berks via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> At the risk of boring this group to tears--
>
> Last fall, before the risks of docx filings were crystal clear, I filed a
> response to a restriction requirement with the claims in docx format. A
> corresponding pdf was not filed. In the response, I canceled claims 1-6,
> withdrew claims 7-15 as non-elected , and filed new claims 16-19
> with the same subject matter as original claims 1-6. New claim 16 was
> independent, new claims 17-19 were dependent on claim 16.
>
> I just got the office action back, and it is a monster. 46 pages. Among
> other stuff, the examiner alleged I was not responsive to the office
> action. I was confused reading this and wondering how I could have messed
> this up so badly.
>
> On further investigation, I discovered that the claims 17-19 in Patent
> Center are shown as depending from claim 11 - not claim 16! I just went
> back and double checked - all of my drafts show claims 17-19 depending from
> claim 16. I probably used the Word cross-reference feature to organize the
> claim numbers, but the USPTO on upload corrupted this info. For some
> reason, the feedback document was not saved so I have no conclusive proof
> of the data corruption, but on my side all drafts have the dependence from
> claim 16.
>
> So in retrospect, it is not surprising the examiner said I was not
> responsive since as far as she could tell, claims 17-19 were drafted as
> depending from non-elected claims. While it looks like a simple typo, this
> data corruption was amplified by making my response look like I didn't know
> what I was talking about, and the examiner was so annoyed she blasted out
> 46 pages.
>
> I want to be clear here - this was not a typo - it was a docx data
> corruption error caused by the USPTO. Now I have a big job cleaning up this
> mess and it's probably going to cost the client an RCE.
>
> Andrew Berks, Ph.D., J.D. | Partner
>
> Patent Attorney and IP Licensing
>
> FRESH IP PLC
>
> 28 Liberty St 6th Fl
>
> New York NY 10005 (US)
>
> Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
> e: andrew at freship.com | w: www.freship.com berksiplaw.com
>
> Direct: +1-845-558-7245
>
>
>

---------- Forwarded message ---------
From: David Boundy <DavidBoundyEsq at gmail.com>
Date: Sat, Apr 20, 2024 at 8:49 PM
Subject: Notice and comment on patent applications
To: For patent practitioners. This is not for laypersons to seek legal
advice. <patentpractice at oppedahl-lists.com>, users of Patentcenter <
patentcenter at oppedahl-lists.com>, for users of EFS-Web and patent
practitioners generally <EFS-web at oppedahl-lists.com>

Feel free to forward this email.

The PTO is running a notice-and-comment period for patent applications
(initial, continuation, etc)   The comment period runs  to 30 days from
3/28, which might be 3/27 or 3/29 depending on how you count).

The subject matter is any requirement of the Paperwork Reduction Act --
     -- anything that is more burdensome than necessary (44 U.S.C.
§ 3506(c)(2)(A)(iii); 5 C.F.R. § 1320.5(d)(1)(i) )
     -- anything that is more burdensome because of inappropriate
information technology
     -- burden that the PTO imposed without going through the procedures
required by the Paperwork Reduction Act
     -- the PTO requires something that is not "necessary for the proper
performance of the agency" (44 U.S.C. § 3506(c)(2)(A)(i))
     -- the PTO's proposed rule is not "implemented in ways consistent and
compatible, *to the maximum extent practicable*, with the existing
reporting and recordkeeping practices of those who are to respond" (44 U.S.C.
§ 3506(c)(3)(E) ; 5 C.F.R. § 1320.9(e) )
     -- a PTO rule that requires something "unnecessarily duplicative"
     -- a PTO rule that " shift[s] disproportionate costs or burdens onto
the public " (5 C.F.R. § 1320.5(d)(1)(iii)

The following topics are within the scope fo initial patent applications
for this comment period, and are fair game --
    -- the DOCX rule
    -- Patent Center
    -- the additional divisionals that have to be filed because the PTO's
stealth amendment to MPEP Chapter 800

The Federal Register Notice is here --
      https://www.govinfo.gov/content/pkg/FR-2024-03-28/pdf/2024-06592.pdf
The document we're commenting on is here
      https://www.reginfo.gov/public/do/DownloadDocument?objectID=141210700
You can post your comment at the blue "Comment" rectangle about two inches
from the top here
      https://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=202304-0651-001

*Basics of the Paperwork Reduction Act.*  An agency can only collect
paperwork if it has a clearance from OMB.  That clearance is called a
“control number.”  The control number for everything relating to patent
applications is 0651-0032,
https://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=202304-0651-001
 (“0651”
is the PTO’s agency number for all rulemaking actions at OMB, and
“0651-0032” is the control number that gives approval for all stuff
relating to new patent application filings.)

A Paperwork Reduction Act approval runs in two stages.  First, there’s a
60-day notice and comment period where the comments go to the agency.  Then
the agency takes all the letters, and makes a submission to OMB (including
the comment letters verbatim—no misparaphrasing!), and gives a second
30-day comment period.  In this second comment period, all legal
requirements of the Paperwork Reduction Act are fair game.  OMB approves or
disapproves.  The two stages are in 5 C.F.R. § 1320.8 and .9
https://www.law.cornell.edu/cfr/text/5/1320.9

This is the second comment period, in which the comments go to OMB, with
very little filtering by the PTO.

For example, the DOCX rule violates the Paperwork Reduction Act for the
following reasons:

*** By law, an agency may not request “unnecessarily duplicative”
submissions.  44 U.S.C. § 3506(c)(3)(B); 5 C.F.R. § 1320.5(d)(1)(ii).  If
the PTO makes that their lead proposal, it’s a setup for failure.

*** An agency may not “shift[ ] disproportionate costs or burdens onto the
public.”  If we submit a DOCX and a PDF, of course the PTO is going to use
the DOCX, and just put the PDF in the file.  It’ll be entirely our risk and
our cost to request correction.  The PTO can’t ask for information known to
be inherently unreliable, knowing that they’re going to rely on it, and
then shift costs to the public to fix the PTO’s errors.

*** In February 2023, we sent a letter explaining why a two-submission
PDF+DOCX approach is a technological fail—
https://downloads.regulations.gov/PTO-P-2023-0031-0008/attachment_1.pdf at
pages 149-155 (search for “February 14, 2023”)

* DOCX is not a “voluntary consensus” standard (it *is* a “non-government
standard”—it’s got an ISO number.  But it isn’t a “voluntary consensus”
standard.  Microsoft didn’t ask for a full standards committee workup, just
a bare approval—from filing to issue was a few months.)

*What arguments work?*  OMB reviews are confined to OMB’s subject matter
jurisdiction.  An effective letter cannot argue that DOCX is a dumb idea as
a technological matter.

*** A good letter ties facts to specific legal issues where OMB has
jurisdiction.  The listserv gadget Carl uses won't allow attachments; if
you email me I'll send you a boiled-down excerpt from the Paperwork
Reduction Act and its regulations, with hot button phrases highlighted.  Use
catch phrases from the law, “unnecessarily duplicative,” “not necessary for
performance of agency function,” “shift[] disproportionate costs or burdens
onto the public” etc.

*** The arguments that will put most bees under OMB’s blanket are the
procedural ones.  OMB doesn’t want to be in the position the PTO put them
in.  If the PTO had followed procedure, this idea would have died years
ago, without the PTO putting dollars into a doomed engineering project and
without OMB putting time into policing it.  PTAAARMIGAN laid out a bunch of
procedural lapses at
https://downloads.regulations.gov/PTO-P-2023-0031-0008/attachment_1.pdf at
pages 23-28.  Procedure matters—it’s how we get errors out the pipeline
early!  If we get OMB to be very harsh on PTO for procedural breach,
perhaps we won’t have this kind of misbehavior again for the next rule.  If
the PTO misparaphrases your comment letter, that will really irritate
OMB—be sure to point that out.

-- 

<https://www.iam-media.com/strategy300/individuals/david-boundy>

*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

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