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

[Roger Browdy]

David, there may be some misunderstanding.  I am not speaking of two application numbers.  I am talking about a normal continuation or divisional, which has an incorporation by reference of the contents of the parent application in the first paragraph.  Or a normal non-provisional claiming benefit of a provisional filed about a year earlier, which non-provisional is identical to the provisional filed a year ago (it happens sometimes).  Incorporating an incorporation-by-reference paragraph to the beginning of the non-provisional will protect that non-provisional filed in docx.  I am not speaking of the “day before” filing trick.  No more cost than usual.  No more application numbers than usual.

Roger

From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Thursday, February 1, 2024 12:15 PM
To: Roger Browdy <RLBrowdy at browdyneimark.com>
Cc: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; David Boundy <DavidBoundyEsq at gmail.com>; William Ahmed <ahmed.william at ymail.com>
Subject: Re: [Patentcenter] [Patentpractice] two questions about the dreaded .DOCX situation

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<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>; Users of Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>; William Ahmed <ahmed.william at ymail.com<mailto: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<mailto: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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