[Patentcenter] Declarations and DOCX filing

David Boundy DavidBoundyEsq at gmail.com
Thu Jan 18 16:06:07 EST 2024 

I would not take the approach Rich recommends.  If you charge for
proofreading, you give an implied warranty.

But you cannot warrant this.  Because of the inherent design of DOCX, *you
cannot know what the PTO received*.  Any DOCX you review on your computer
is necessarily *on your computer*.  That gives you exactly zero insight
into what the very same bits will yield on the PTO's computers.

On Thu, Jan 18, 2024 at 4:01 PM Richard Straussman via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> 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 problems and
> 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 <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>
> <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>
> <patentcenter at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com> <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 <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 <ben at newportip.com>*
>
>
>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com>
> <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>
> <patentcenter at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com> <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>
> <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>
> <patentcenter at oppedahl-lists.com>
> *Cc:* Roger Browdy <RLBrowdy at browdyneimark.com>
> <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>
> <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>
> <patentcenter at oppedahl-lists.com>
> *Cc:* Patent Lawyer <patentlawyer995 at gmail.com>
> <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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> http://oppedahl-lists.com/mailman/listinfo/patentcenter_oppedahl-lists.com
>
>
>
> --
>
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> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *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 <dboundy at potomaclaw.com>* | *www.potomaclaw.com
> <http://www.potomaclaw.com>*
>
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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 <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

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