[Patentcenter] Notice and comment on patent applications (David Boundy)

Mon Apr 22 17:59:35 EDT 2024

Jill asks " Would it be more effective for us to give input to the OMB
individually, or through a group missive deftly crafted by either/both of
you two, and signed by interested parties, as done in the past? "  the
answer, of course, is *both.*

Here are --
     -- the things that should be in an effective letter
     -- a few example paragraphs that you can use, and URLs of past letters
that you can look at for more examples
     -- a URL for where to submit your comment

Even though the Federal Register notice says that letters are addressed to
the PTO, the letters really go to the Office of Information and Regulatory
Affairs (OIRA) in OMB.

*Scope: what’s under review?  *initial patent applications, including
provisionals, nonprovisionals, continuations—

***  the DOCX rule

***  Patent Center

***  the additional divisionals required by the PTO's stealth amendment to
MPEP Chapter 800

*Scope: legal issues:  *In this review, OMB only has subject matter
jurisdiction under the Paperwork Reduction Act.  Legal provisions to work
into your letter include:

*** 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  (both the DOCX rule and the premature cut-over to Patent Center
are unlawful here; the Director of the Office of Information and Regulatory
Affairs )

*** 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))  (both the DOCX
rule and the premature cut-over to Patent Center are clearly unlawful here)

*** 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" (44
U.S.C. § 3506(c)(3)(B); 5 C.F.R. § 1320.9(b) (the DOCX + PDF approach is
clearly unlawful here)

*** a PTO rule that "shift[s] disproportionate costs or burdens onto the
public " (5 C.F.R. § 1320.5(d)(1)(iii)  (both the DOCX rule and the
premature cut-over to Patent Center are clearly unlawful here)

*** “quality, utility, and clarity of the information to be collected.” 44
U.S.C. § 3506(c)(2)(A)(iii), § 3506(c)(3)(J).

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

*Here are a couple of example paragraphs cribbed from our letters re DOCX
rule:*

Public commenters estimate the cost of compliance with the PTO’s DOCX
proposal (proofreading and error correction) at $200 million per year
(example buildups to get to $200 million per year were brought to OMB's
attention at
https://www.reginfo.gov/public/do/DownloadDocument?objectID=135639300 at
pages 99-107 and 111-113).  The Patent Office estimates its savings at
about $780,000 per year—a cost-to-benefit/cost ratio of *250 to one*.  More
than a few people have speculated that this is simply a way for the Patent
Office to raise fees *sub rosa*, without going through the rulemaking
process.

PDF (the current filing regime, and the form used by the courts and all
other agencies for formal filings, and the form that the public comment
letters advocated) was designed from the outset to be “portable,” that is,
dozens of vendors all commit to treating a document in PDF format
identically—the property one would expect for legal documents.

DOCX is the opposite. Collecting patent applications in DOCX yields very
poor “quality, utility, and clarity of the information to be collected.” 44
U.S.C. § 3506(c)(2)(A)(iii), § 3506(c)(3)(J). Compared to PDF, DOCX is an
unreliable technology subject to considerable machine-specific variance.
Documents that appear correct as submitted can appear
differently—erroneously—when opened and read on others’
computers—including, most pertinently, PTO’s computers. Though a standard
exists, that standard does *not *guarantee portability, and only one vendor
(Microsoft) uses DOCX as its internal and preferred form. Instead, by
design, every computer that opens a DOCX file is free to handle any given
DOCX file differently—it’s common to see bugs introduced because of
different versions of Microsoft Word, or when a DOCX file (written in
English) generated on a Hebrew or Japanese edition of Word is opened on an
American edition, or when two computers have different fonts or other
ancillary software installed. Moreover, Microsoft changes its internal
implementation of the DOCX format, to some extent, to disadvantage
interoperability with competing products. DOCX is *not *designed for the
reproducibility and stability necessary for legal documents (especially
complex legal documents like patent applications).

*Here are a couple of paragraphs cribbed from our letters re Patent Center:*

In mid-November 2023, the PTO retired an old and reliable computer system,
and forced users to use a replacement system, named Patent Center.  In
November 2023, and still today, Patent Center is still incomplete—some
essential functions are not

implemented at all. Many of the functionalities that nominally do exist in
Patent Center are buggy to the point of unuseability—they give incorrect
results, or behave inconsistently, or combinations of inputs that the PTO
failed to consider don’t work.  Updates of Patent Center add nearly as many
bugs as they fix.  As far as we can ascertain, the PTO’s decision to
decommission the reliable systems reflects no input from the public.  We
estimate that the cost to the public of the PTO’s premature retirement of
its reliable software in favor of unreliable Patent Center will be $150
million in FY 2024, $100 million in FY 2025, and $50 million in FY 2026.

*You can find good paragraphs to crib at –*

*** letters re DOCX rule are at
https://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=202309-0651-002

*** our update letter of Nov. 1, 2023 re Patent Center is at
https://ssrn.com/abstract=4620375

*** our main letter (Oct 9, 2023) re Patent Center is at
https://ssrn.com/abstract=4597405

On thing to NOT do.  It’s just wrong to say “DOCX is not a standard.”  DOCX
has the two numbers that matter: ISO 29500 and ECMA-376.  When it has those
two numbers, DOCX is a “standard” by any definition.  What you can say is
that it is not a “voluntary consensus standard” and is not an
“interoperability standard.”   That is fully explained at
https://www.reginfo.gov/public/do/DownloadDocument?objectID=135639300 at
pages 14-16.

On Mon, Apr 22, 2024 at 9:34 AM Jill Santuccio via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> Thank you, David, for this insightful message.
>
>
>
> For your consideration and Carl’s input as well: Would it be more
> effective for us to give input to the OMB individually, or through a group
> missive deftly crafted by either/both of you two, and signed by interested
> parties, as done in the past?
>
>
>
> If the former, could either/both of you give us a template submission of
> sorts, encapsulating the key arguments to be made with instructions
> where/how to submit?
>
>
>
> I regret asking either of you to expend more time on this, but I don’t
> feel equipped to pen such a letter on my own. I would support either of
> these two paths above, especially in the face of the impending deadline.
> I’m guessing others here would agree.
>
>
>
> With deep gratitude,
>
> Jill
>
>
>
> *Jill Santuccio* | Intellectual Property Paralegal
>
> (she/her/hers)
>
>
>
> (720) 408-1496 (Direct)
>
> (720) 204-5666 (Main)
>
> (720) 204-5669 (Fax)
>
> jsantuccio at HPDLaw.com
>
> www.HPDLaw.com <http://www.hpdlaw.com/>
>
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*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

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

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<http://www.potomaclaw.com>*

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