[Patentcenter] Another Docx Horror Story

Mon Apr 22 17:01:10 EDT 2024

Like Scott, I do not file anything in DOCX format unless the penalty
applies (and sometimes not even then). Which leads to another cautionary
tale:

I recently filed two related applications in DOCX format (with auxiliary
PDFs) on the same day. I'll refer to them as A and B. A incorporates B by
reference, and B incorporates A by reference.

I filed A first. Obviously, at the time I filed A, I didn't have B's
application number, so there was a "_____" in A's written description's IBR
paragraph.

After filing B, but still on the filing date, I filed a preliminary
amendment in A (as a "follow-on submission") to replace the "_____" with
B's assigned application number. (I like to file this kind of preliminary
amendment on the filing date (a) to get it out of my hair, and (b) to
foreclose any possibility of a "new matter" question later.)

The preliminary amendment was a PDF file with 1 page of specification
containing the single IBR paragraph replacing the "_____" with B's assigned
application number.

One guess as to what I received from the USPTO this morning.

If you guessed "a demand for $400," you are correct. I received a Notice to
File Missing Parts, namely the non-DOCX penalty fee, even though I filed
the preliminary amendment as a "follow-on submission" and not as part of
the "original filing" (as evidenced by the second EAR in the file wrapper
and the appearance of A's own application number in the caption of the
preliminary amendment). Apparently someone concluded, based on the fact
that the preliminary amendment has the same filing date as the original
filing, that the penalty should be assessed.

I called to request that the Notice be withdrawn. I was told that I should
have filed the preliminary amendment in DOCX format, an assertion I found
troubling. (Have they been requesting anything except the original
application in DOCX format??)

We'll see if they withdraw the Notice. If not, it will lead to a bizarre
situation in which you can file a preliminary amendment in PDF format
without having to pay the non-DOCX penalty fee, but only if you file it
after the filing date. Which seems undesirable for a couple of reasons, and
also -- what's that phrase? oh yes! -- "arbitrary and capricious."

Time spent so far: Not yet $400 because I didn't spend much time on hold
when I called, but if I have to submit something in writing to get the
Notice withdrawn, it will exceed $400.

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com

On Sun, Apr 21, 2024 at 8:29 PM Scott Nielson via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> 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
>
>
>
> *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 | *w: *www.freship.com berksiplaw.com
>
> *Direct*: +1-845-558-7245
>
>
>
>
>
>
>
>
>
>
>
> --
> Patentcenter mailing list
> Patentcenter at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentcenter_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentcenter_oppedahl-lists.com/attachments/20240422/14fd67a2/attachment.htm>