[Patentcenter] Another Docx Horror Story

Thu Apr 25 20:47:06 EDT 2024

Hmmmm.....sounds like one should only use pdf when sending anything outside
of the office.....not just the USPTO and PC.
BC
Brian Cronquist
VP Technology & IP
MonolithIC 3D Inc.

On Thu, Apr 25, 2024 at 8:43 PM Judith S via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> I just had a call with an Examiner and he asked me to send him an
> Examiner's amendment & requested "not track changes, and not
> auto-numbering" because apparently their systems screw that up sometimes.
>
> Judith
>
> On Thu, Apr 25, 2024 at 5:27 PM Christian Scholz via Patentcenter <
> patentcenter at oppedahl-lists.com> wrote:
>
>> 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
>>
>>
>>
>> This message, any email message thread that this message is part of, and
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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
>>
>> 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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