[Patentcenter] [Patentpractice] two questions about the dreaded .DOCX situation

[David Boundy]

Yes, you can rely on the incorporated-by-reference parent to correct errors
introduced by the PTO.

The existence of a path to get a correction is only half the problem.  The
other half is that the PTO will not reimburse you or your client for the
costs of doing the proofreading, error checking, or correction.

On Thu, Feb 1, 2024 at 8:41 AM William Ahmed via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Dear List,
>
> Question A -->
>
> Suppose we (i) file the spec in .DOCX for a US non-provisional under 35
> USC 111 and
> (ii) 20 minutes after filing on the DAY of filing, we submit a preliminary
> amendment in PDF on the day of filing,
>
> does this  PDF preliminary amendment trigger the .DOCX surcharge?
>
> Question B [unrelated]--> hypothetically, let's say we file .DOCX without
> the auxiliary pdf - we would NEVER do that, but let's just say
> hypothetically.
>
> Let's assume that this patent application is a CON [parent filed in pdf
> format] of a published/pending US patent non-provisional application,
> and that on page 1 of the .DOCX spec the CON parent is incorporated by
> reference.
>
> The patent grants, and there are problems with the granted patents due to
> USPTO .DOCX technology issues (e.g. one of the equations is converted
> into block symbols or otherwise downgraded). I have no AUX-PDF to save me
> in this situation.
>
> Would the incorporation-by-reference save the situation?
>
>
> Thank you,
> Bill
>
>
> --
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>
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>


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