[Patentcenter] Declarations and DOCX filing

[Carl Oppedahl]

Yes this is an example of how filers might go down a wrong path.


It is one thing for the USPTO to say "so far as we are concerned, sure 
we will water down the oath-or-declaration obligation to whatever extent 
is needed to lull people into thinking that they don't have to think 
about this."


It is completely another thing to realize that if we fire it off to the 
client, and they say they are comfortable with those words on the page, 
and if we then change the words on the page, and what we file is not the 
same document the client approved, then the client might sue us later.  
Whatever we changed might turn out to be a real or perceived problem.


One needs to carefully avoid taking legal advice from the USPTO.


On 1/18/2024 1:16 PM, Scott Nielson via Patentcenter wrote:
> The MPEP says that as long as the changes don't add new matter, then 
> you don't need a new declaration.
>
>     37 CFR 1.52(c) states that “[i]nterlineation, erasure,
>     cancellation, or other alteration of the application papers may be
>     made before or after the signing of the inventor's oath or
>     declaration referring to those application papers, provided that
>     the statements in the inventor's oath or declaration pursuant to §
>     1.63 remain applicable to those application papers. A substitute
>     specification (§ 1.125) may be required if the application papers
>     do not comply with paragraphs (a) and (b) of this section.”
>
>     An inventor is not required to re-execute a new inventor’s oath or
>     declaration after alteration of the application papers provided
>     that the changes are minor, for example, correction of
>     typographical errors, grammatical problems, and clarifying
>     sentences. If the changes would amount to the introduction of new
>     matter had the change been made to a filed application, however,
>     then the inventor should execute a new oath or declaration after
>     reviewing the amended application. The rule permits alterations to
>     the specification without the inventor re-executing an oath or
>     declaration only where the statements in the executed declaration
>     remain applicable. Additionally, an inventor must before executing
>     the oath or declaration (i) review and understand the contents of
>     the application; and (ii) be aware of their duty of disclosure.
>     See 37 CFR 1.63(c). If the changes made to the specification
>     before an application is filed result in substantial alterations
>     to the application, then an inventor may not understand the
>     contents of the application or be aware of their duty to disclose
>     information relating to the substantial alteration.
>
> MPEP 602.08(b).
>
> *Scott Nielson*
>
> 801-660-4400
>
> ------------------------------------------------------------------------
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com> on 
> behalf of Benjamin Keim via Patentcenter <patentcenter at oppedahl-lists.com>
> *Sent:* Thursday, January 18, 2024 1:04 PM
> *To:* For bug reports, feature requests, and tips and tricks about 
> Patent Center. <patentcenter at oppedahl-lists.com>
> *Cc:* Benjamin Keim <ben at newportip.com>
> *Subject:* [Patentcenter] Declarations and DOCX filing
>
> 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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