[Patentcenter] Another Docx Horror Story

Thu Apr 25 20:26:56 EDT 2024

Andrew,

If you take your original draft word document that has claims 17–19 depending from claim 16 and select all text and hit F9 (field refresh), does it change to what the USPTO has?

Several years ago I sent an Examiner a proposed Examiner’s amendment of the last two claims in a claim set; the claim set they were copied from used sequential autonumber fields, and those fields went into the new document with the last two claims.  However, I did not refresh the field values, and they thus had the correct claim numbers listed.  The patent then issued and claims 1 and 2 were replaced by the amended versions of claims 19 and 20.  After discussing with the Examiner, they realized that the USPTO systems automatically do field refreshes on Word documents, which can wreak havoc on claim sets that have dynamic numbering in them.  In this case, claims 19 and 20 became claims 1 and 2, and the USPTO dutifully replaced actual claims 1 and 2 with the amended claims 19 and 20 and left actual claims 19 and 20 unamended.

I now make all my claim numbering static just prior to filing.  Dynamic numbering is useful when drafting and in source documents, but there’s too much risk of mayhem if left in on filing.

Christian

PS: I once received a transferred-in case in which the original drafter used paragraph numbering for their claims.  The draft was then filed by another firm that applied their standard formatting to the document prior to filing, not realizing that in doing so, they had wiped out all the claim numbers (from 80 claims).  All of the dependent claims showed up as being dependent on claim 0.

Christian Scholz
Weaver Austin Villeneuve & Sampson LLP
555 12th Street, Suite 1450
Oakland, CA 94607
(510) 663-1100

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From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> On Behalf Of Andrew Berks via Patentcenter
Sent: Sunday, April 21, 2024 9:20 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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New York NY 10005 (US)

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