[Patentcenter] Another Docx Horror Story

[Richard Schafer]

The last I knew, the PTO was still saying that DOCX was only accepted in new applications, not office action responses. I’m surprised PatentCenter was even willing to accept a response to a restriction requirement in that format.

Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
M: 832.283.6564 | richard at schafer-ip.com<mailto:richard at schafer-ip.com>

From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> On Behalf Of Andrew Berks via Patentcenter
Sent: Sunday, April 21, 2024 11:20 AM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: Andrew Berks <andrew at berksiplaw.com>
Subject: [Patentcenter] Another Docx Horror Story

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<mailto:andrew at freship.com> | w: www.freship.com<http://www.freship.com/> berksiplaw.com<https://berksiplaw.com/>

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