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

[David Boundy]

Yeah, I thought the same.   Then my wonderful assistants pointed out the
docketing difficulties of having (in essence) two serial numbers for the
same application.  So I am pretty convinced that either
provisional-plus-incorporation-by-reference or PCT-plus-file-by-reference
are more costly than the $400/$160/$80.

The one thing that I'm still cogitating is the Preliminary Amendment work
around.

On Thu, Feb 1, 2024 at 11:10 AM Roger Browdy <RLBrowdy at browdyneimark.com>
wrote:

> It seems to me that the explicit incorporation by reference technique for
> continuations, divisionals, and non-provisionals that are identical to the
> incorporated by reference provisional is superior to aux-pdf as no petition
> is ever necessary.  If an error in the PTO version of the application is
> discovered any time during the pendency of the application, it should be
> easy to correct by simple amendment as it will not be new matter due to the
> incorporation by reference.  But it is problematic after the patent
> issues.  You could try a request for certificate of correction, but it is
> not Office error.  To correct an applicant’s error, you need more than no
> new matter.  You have to show that no further examination is necessary,
> etc.  It may be that the only means of correction is by reissue.  Again, no
> problem of new matter in the reissue, but still a lot of extra time and
> expense.  We have no idea how aux-pdf will work in the same situation after
> issue.
>
>
>
> Roger
>
>
>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On Behalf
> Of *David Boundy via Patentcenter
> *Sent:* Thursday, February 1, 2024 10:24 AM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>; Users of Patentcenter <
> patentcenter at oppedahl-lists.com>; William Ahmed <ahmed.william at ymail.com>
> *Subject:* Re: [Patentcenter] [Patentpractice] two questions about the
> dreaded .DOCX situation
>
>
>
> 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
>
>
>
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentcenter_oppedahl-lists.com/attachments/20240201/7403bf1c/attachment.htm>