[Patentcenter] Another Docx Horror Story

[Scott Nielson]

There is a lot of confusion about when to use Docx. At the moment, I only file DOCX when it's required to avoid a processing fee—i.e., when initially filing a 111 non-provisional application  (not national phase entry, provisional applications, or office action responses). I see too many people filing DOCX when it is not required and running into problems.

I might consider filing DOCX in other situations such as OA responses as soon as I see some indication that the USPTO actually uses the DOCX files. My understanding is that the USPTO currently doesn't use the DOCX files (i.e., claim amendments are hand keyed into the system), but has plans to do so in the future.
________________________________
From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> on behalf of Richard Schafer via Patentcenter <patentcenter at oppedahl-lists.com>
Sent: Sunday, April 21, 2024 11:47 AM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: Richard Schafer <richard at schafer-ip.com>; Andrew Berks <andrew at berksiplaw.com>
Subject: Re: [Patentcenter] Another Docx Horror Story


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

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Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
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