[Patentcenter] Another Docx Horror Story

Mon Apr 22 18:26:57 EDT 2024

Hi Richard,

Well that sucks, but thank you for sending it.

Sure would be nice if this stuff were in the MPEP rather than a list of
FAQs that can be changed/disappear at any time.

Sigh.

To quote Suzannah: How much longer before I can retire???

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 Mon, Apr 22, 2024 at 2:24 PM Richard Schafer <richard at schafer-ip.com>
wrote:

> 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
>
>
>
> *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
>
> 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
>
>
>
>
>
>
>
>
>
>
>
>
> --
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