[Patentcenter] Another Docx Horror Story

Mon Apr 22 17:23:56 EDT 2024

There’s zero chance they’ll agree to withdraw the non-DOCX fee requirement.

From File patent application documents in DOCX | USPTO<https://www.uspto.gov/patents/docx>:

If I want to file a preliminary amendment on the same day as my initial filing of a new utility application under 35 U.S.C. 111(a), does the preliminary amendment need to be in DOCX format to avoid the non-DOCX surcharge?

In accordance with 37 CFR 1.115(a), a preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application. Thus, if a preliminary amendment is filed on the same day as the application, the amendment must be in DOCX format to avoid the surcharge. A preliminary amendment filed after the filing date of the application will not incur the surcharge because it is not part of the original disclosure of the application and thus is not required to be in DOCX format.
You would have avoided this problem by filing the preliminary amendment the day after the initial filing.

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 Krista Jacobsen via Patentcenter
Sent: Monday, April 22, 2024 4:01 PM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: Krista Jacobsen <krista at jacobseniplaw.com>
Subject: Re: [Patentcenter] Another Docx Horror Story

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<mailto:krista at jacobseniplaw.com>
T:  408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com>

On Sun, Apr 21, 2024 at 8:29 PM Scott Nielson via Patentcenter <patentcenter at oppedahl-lists.com<mailto: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<mailto:patentcenter-bounces at oppedahl-lists.com>> on behalf of Richard Schafer via Patentcenter <patentcenter at oppedahl-lists.com<mailto: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<mailto:patentcenter at oppedahl-lists.com>>
Cc: Richard Schafer <richard at schafer-ip.com<mailto:richard at schafer-ip.com>>; Andrew Berks <andrew at berksiplaw.com<mailto: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<mailto: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<mailto:patentcenter at oppedahl-lists.com>>
Cc: Andrew Berks <andrew at berksiplaw.com<mailto: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/>

Direct: +1-845-558-7245

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