[Patentcenter] Declarations and DOCX filing

[Richard Straussman]

Much better to simply not file in DOCX (of course, its your license at 
risk, not to mention the value of any patent that might issue).

*Richard Straussman**
* *Senior Counsel*
* Registered Patent Attorney
* Member NY, NJ & CT Bars
*. . . . . . . . . . . . . .*
*Weitzman Law Offices, LLC*
*Intellectual Property Law*
425 Eagle Rock Avenue, Suite 401 (PLEASE NOTE THE SUITE CHANGE)
Roseland, NJ 07068
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*e-mail*rstraussman at weitzmanip.com

*http://www.weitzmanip.com
*



On 1/18/2024 3:04 PM, Benjamin Keim via Patentcenter wrote:
>
> For those applications that are filed in DOCX, it bothers me that the 
> document reviewed by the inventors when they decide to sign the 
> declaration is not the document that is saved in Patent Center.
>
> For PDF filings we would send the inventors the PDF document and the 
> declaration form. They would choose to sign the declaration if they 
> agreed what was in the PDF specification and drawings was their 
> invention. We would upload the documents reviewed by the inventors and 
> they would be saved in the USPTO’s electronic system. I suppose it 
> wasn’t actually the documents reviewed by the inventors because the 
> PDFs were changed by flattening each page to a TIFF image and 
> reassembling as a PDF. But all the ink on the page would be the same 
> but for some halftoning degradation.
>
> The USPTO declaration form PTO/AIA/01 for declarations included with 
> the initial filing has the language “As the below named inventor, I 
> hereby declare that: This declaration is directed to: The attached 
> application.” What the inventor considers as the “attached 
> application” may be different than what becomes the record copy in 
> Patent Center. Does this open up the inventors to risk of fine or 
> imprisonment (or both) if the USPTO systems change something 
> significant in the DOCX file?
>
> I’m thinking about creating a declaration form that lists the file 
> name, file size, and SHA-512 hash of the documents (spec and drawings) 
> provided to the inventors. My intention for this would be to 
> unambiguously link the documents reviewed by the inventors with their 
> statements made in the declaration.
>
> -Ben
>
> Benjamin A. Keim
>
> (206) 920-9038
>
> _ben at newportip.com <mailto:ben at newportip.com>_
>
> *From:*Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On 
> Behalf Of *Carl Oppedahl via Patentcenter
> *Sent:* Thursday, January 18, 2024 9:01 AM
> *To:* For bug reports, feature requests, and tips and tricks about 
> Patent Center. <patentcenter at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* Re: [Patentcenter] Faxes to the PTO - some legacy things do 
> work
>
> Yeah, I imagine most practitioners do always file the declaration with 
> the application.  I imagine I am quite out of the ordinary, having to 
> hand in inventors' declarations later.
>
> What happens to me is, I keep fiddling with the text of the patent 
> application, particularly the claims, with multiple version changes 
> leading up to the moment, late in the day on the last possible day, 
> that I click "submit" and e-file it at the patent office.
>
> The inventor declaration of course is tied to the notion that the 
> signer has reviewed the patent application that is going to be filed, 
> and agrees that he or she is an inventor thereof.  But in my case, 
> given that the exact wording of the application kept wriggling around 
> until the very end, there is no way the inventor could be expected to 
> sign such a thing until after the wriggling had ceased.  Which means, 
> no way could the inventor even sign the declaration until 
> chronologically after the filing of the application had taken place.
>
> Yet another thing that happens to me is, the instructions come in from 
> foreign instructing counsel to please get something filed at the 
> USPTO.  So I prepare inventor declarations and send them to 
> instructing counsel.  The signed declarations do not arrive until some 
> days later, long after the US patent application got filed.  Which 
> means, no way could I managed to file the declaration with the 
> application.
>
> On 1/18/2024 8:49 AM, Randall Svihla via Patentcenter wrote:
>
>     We always file the declaration with the application.
>
>     *From:*Patentcenter <patentcenter-bounces at oppedahl-lists.com>
>     <mailto:patentcenter-bounces at oppedahl-lists.com> *On Behalf Of
>     *Roger Browdy via Patentcenter
>     *Sent:* Thursday, January 18, 2024 10:34 AM
>     *To:* For bug reports, feature requests, and tips and tricks about
>     Patent Center. <patentcenter at oppedahl-lists.com>
>     <mailto:patentcenter at oppedahl-lists.com>
>     *Cc:* Roger Browdy <RLBrowdy at browdyneimark.com>
>     <mailto:RLBrowdy at browdyneimark.com>
>     *Subject:* Re: [Patentcenter] Faxes to the PTO - some legacy
>     things do work
>
>     I don’t think it is a joke.  I bet there was a huge volume of
>     applications filed Tuesday night to avoid the DOCX tax.  We had to
>     file one late at night and had a hell of a time trying to do so. 
>     Couldn’t file the assignment/dec forms with EPAS because of the
>     problems and couldn’t get back into PC to file the declaration
>     directly, so have to pay the surcharge for late filing of
>     declaration because of the PTO problems.  In a fair world, we
>     would be able to get that refunded.
>
>     Roger
>
>     *From:*Patentcenter <patentcenter-bounces at oppedahl-lists.com>
>     <mailto:patentcenter-bounces at oppedahl-lists.com> *On Behalf Of
>     *Patent Lawyer via Patentcenter
>     *Sent:* Thursday, January 18, 2024 10:25 AM
>     *To:* For bug reports, feature requests, and tips and tricks about
>     Patent Center. <patentcenter at oppedahl-lists.com>
>     <mailto:patentcenter at oppedahl-lists.com>
>     *Cc:* Patent Lawyer <patentlawyer995 at gmail.com>
>     <mailto:patentlawyer995 at gmail.com>
>     *Subject:* [Patentcenter] Faxes to the PTO - some legacy things do
>     work
>
>     There was recent discussion about faxes to the PTO and return
>     faxes from the PTO.
>
>     Because of yesterday’s shit show with Patent Center and because of
>     other deficiencies in Patent Center, I had to fax four separate
>     submissions to the PTO last night.
>
>     I did receive acknowledgment faxes back from the PTO for each
>     submission.   So, that legacy functionality is still there, and it
>     still worked for me. (I hope the PTO lurkers on this list don’t go
>     and turn it off!)
>
>     I use a service called eFax.  It is not free.
>
>     PS. I am still laughing at Sandra E’s joke about DDOS being just
>     normal filers filing in a volume the system can’t handle.
>
>
>
>
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