[Patentcenter] Declarations and DOCX filing

Thu Jan 18 16:35:31 EST 2024

I expect that more than a few of us are figuring out what to do about large
entity clients who file a lot of applications and, as a result, are
cost-sensitive. They do not want to pay the $400 penalty for each
application, and they also don't want to pay for the necessary line-by-line
review of the USPTO-generated files. These clients might instruct their
patent attorney to go ahead and file in DOCX and just give the
USPTO-generated files a brief review to make sure nothing obvious was
broken. (I have increased anxiety just from typing that.)

I started thinking about the possibility of having this kind of client
execute a waiver. In California, attorneys are not allowed to ask clients
to prospectively waive malpractice claims, but it seems to me that it
should be ethical for an attorney to get a client to agree in writing that
as long as the attorney uploaded the DOCX file that the client approved,
the client could agree ahead of time, in writing, that what the USPTO does
to the file or its content after the upload (including generation of the
new DOCX file, which Carl calls D2) is not the attorney's responsibility.
In other words, the client has explicitly instructed the attorney not to do
the line-by-line reviews and is assuming all risk of USPTO-introduced
problems/errors during the generation of the D2 file from the approved D1
file and everything else bad that could happen as a result of the
application having been submitted as DOCX.

Sounds promising on its face, but the problem is that there's no way to
prove that I did, in fact, upload the DOCX file the client approved. There
is no audit trail. The DOCX file I upload is never acknowledged, I don't
have a hash of it, and it doesn't even show up on the EAR. If something is
horribly wrong with the patent TYFNIL, guess whose assumption-of-risk
security blanket does absolutely nothing?

The only options I've come up with for this kind of client are (a) I eat
the fee, or (b) the client files the application (submitting in DOCX,
etc.). Sadly, I think (b) is going to be a hard no from this kind of
client, which leaves (a) or terminating the client as the only options.

Thanks, USPTO. Really appreciate how you look out for practitioners. Bang
up job.

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com

On Thu, Jan 18, 2024 at 1:08 PM David Boundy via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> 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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>>
>>
>>
>> --
>>
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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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>
>
> --
>
>
> <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>*
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
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>
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