[Patentcenter] Declarations and DOCX filing
Richard Straussman
rstraussman at weitzmanip.com
Thu Jan 18 16:00:54 EST 2024
Some of those, especially "one off" clients, can find a new attorney.
For larger clients, I am trying to work up a form along the lines of
something like this:
If you want to file in DOCX, we must have the application complete and
ready to file at least 5 days before any due date, we will charge to
review the PTO created D2 file at the fixed rate of $50 per text
application page and surcharge and additional $25 on top for reviewing
of each formula, table and per page of pseudo code or source code
listing (we don't do chemical or biotech cases). We will also create and
upload an Auxiliary PDF and retain that file and the message digest for
that file for a fixed fee of $250.
Alternatively, they must agree to the filing of a provisional
application in PDF first (and pay our fee and the Official Fee for doing
so) and we will file the DOCX the next day that expressly incorporates
the provisional by reference in its entirety.
We will also provide and send, with the application and declaration, a
form that the Applicant MUST sign acknowledging all of the problemsand
explaining the risks (to them and us) associated with any DOCX filing
with or without the Auxiliary PDF or pre-filed provisional, and that
expressly states that we absolutely ONLY recommend filing in PDF, NEVER
in DOCX, and that, if they insist on DOCX, they affirmatively
acknowledge that they are acting _directly contrary to our express legal
advice _ and, thus, while we will, thereafter, file in that form as a
courtesy, thereafter, they assume all responsibility for all negatives
that result from that form of filing. Those per-page charges will be
itemized in the sent form and will ALWAYS result in much greater than
the $400 surcharge (unless the application is less than 8 pages of pure
text without an Aux file) or 3 pages with one (a size I have only filed
once in 30 years of practice and, in which case (due to my practice
areas) the risks are probably non-existent), so if they opt for the DOCX
route, "stupid is as stupid does." If they refuse, then it is "sorry,
get new counsel time."
*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
*direct line* 973.403.9943
*main* 973.403.9940
*fax*973.403.9944
*e-mail*rstraussman at weitzmanip.com
*http://www.weitzmanip.com
*
On 1/18/2024 3:31 PM, Randall Svihla via Patentcenter wrote:
>
> Not every firm has clients who will agree to pay the $400 non-DOCX
> surcharge regardless of the parade of horribles.
>
> *From:*Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On
> Behalf Of *David Boundy via Patentcenter
> *Sent:* Thursday, January 18, 2024 3:28 PM
> *To:* For bug reports, feature requests, and tips and tricks about
> Patent Center. <patentcenter at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>
> *Subject:* Re: [Patentcenter] Declarations and DOCX filing
>
> I agree with Rich. My firm has issued a policy that we only file in
> PDF. If a client wants DOCX, we give them a parade of horribles, and
> tell them that if they want to save $400, they must give us
> instructions in writing, and acknowledge all the costs of all the
> horribles. Any nitwit can see that all the excess costs will be close
> to, perhaps above, $400 for even best-case applications, and any
> single high cost example will drive the average far above $400. I'll
> let you know in a couple months if anyone accepts the offer.
>
> On Thu, Jan 18, 2024 at 3:16 PM Richard Straussman via Patentcenter
> <patentcenter at oppedahl-lists.com> wrote:
>
> 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
> **direct line** 973.403.9943
> **main** 973.403.9940
> **fax** 973.403.9944
> **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>
> <mailto: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>
> <mailto:patentcenter at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com> <mailto: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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>
>
>
> --
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>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> _dboundy at potomaclaw.com <mailto:dboundy at potomaclaw.com>_|
> _www.potomaclaw.com <http://www.potomaclaw.com>_
>
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