[Patentcenter] Declarations and DOCX filing

[Carl Oppedahl]

On 1/18/2024 2:35 PM, Krista Jacobsen via Patentcenter wrote:
> 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?
>
This is exactly right.  The DOCX file that the practitioner uploads 
never shows up on the ack receipt in any way.  Not by name, not by file 
size, and not by message digest.  So you can never prove what file you 
actually uploaded.

I suppose then we turn in panic to the aux-PDF.  There we do have a 
chance of a bit of an audit trail.  Suppose the agreement with the 
client is tied to uploading the aux-PDF file that the client specified.  
(And of course the DOCX file that the client specified.)  There at least 
the filer can preserve the DOCX file locally (in perpetuity, without 
being paid to do it).  And the message digest in the ack receipt will 
match the locally preserved aux-PDF file.

But this still leaves the practitioner hanging by a thread.  The 
practitioner still cannot ever prove what exact DOCX file the 
practitioner uploaded.  Worse, to the extent that the uploaded DOCX file 
(or rather the D2 file created by the USPTO) fails to match the aux-PDF, 
the USPTO might well dismiss the petition to correct on the grounds that 
the aux-PDF fails to match what the USPTO says the filer filed.  Related 
to this is risk that the failure-to-match might actually be the client's 
fault.  The client might transmit D1 and aux-PDF to the practitioner 
with instructions to hold his or her nose and file it essentially 
unreviewed.  And it might be the client's fault that they don't match.





-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 4514 bytes
Desc: S/MIME Cryptographic Signature
URL: <http://oppedahl-lists.com/pipermail/patentcenter_oppedahl-lists.com/attachments/20240118/9d86f56a/attachment.p7s>