[Patentcenter] Declarations and DOCX filing
Carl Oppedahl
carl at oppedahl.com
Thu Jan 18 18:16:11 EST 2024
On 1/18/2024 3:21 PM, Randall B. Bateman via Patentcenter wrote:
>
> I think that is a bit overstated. If the client has been advised, the
> choice is up to them. It is not malpractice to follow a client’s
> instructions if they have been advised of the consequences.
>
This only works if one can prove (at litigation time) that one fully
advised the client of all of the risks.
Clearly what needs to happen is somebody drafting up an "advice of
consequences" document and making sure that all of the risks are indeed
fully spelled out.
And then get the appropriate state ethics bodies to sign off that it is
permitted under ethics rules to ask a client to agree to such a
document. (Some state ethics bodies frown on anything that smacks of
asking a client to waive a malpractice claim in advance.)
I suggest that merely memorializing "the client instructed me to file
via DOCX to avoid the penalty" is not going to come anywhere close to
protecting the practitioner. One would have to spell out, quite fully,
all of what you call "the consequences". Just a couple of days ago I
presented a CLE program that required well over a dozen presentation
slides to spell out "the consequences".
> There are a lot of solo inventors and small companies that are very
> concerned about costs. I have also had midsized clients that will
> likewise save money. A lot also depends on what you are trying to
> patent, it would seem that an application with chemical or other
> formulas is at a much higher risk than a simple mechanical case.
>
> Randall B. Bateman
>
> Registered Patent Attorney
>
> P.O. Box 1319
>
> Salt Lake City, UT 84110
>
> (801)533-0320
>
> rbb at batemanip.com <mailto:rbb at batemanip.com>
>
> www.batemanip.com <http://www.batemanip.com/>
>
> This e-mail communication is intended for the sole use of the of the
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> intended recipient(s) is strictly prohibited. If you are not the
> intended recipient contact rbb at batemanip.com
> <mailto:rbb at batemanip.com> and destroy all copies of this communication.
>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On
> Behalf Of *Richard Straussman via Patentcenter
> *Sent:* Thursday, January 18, 2024 2:38 PM
> *To:* Randall Svihla via Patentcenter <patentcenter at oppedahl-lists.com>
> *Cc:* Richard Straussman <rstraussman at weitzmanip.com>
> *Subject:* Re: [Patentcenter] Declarations and DOCX filing
>
> I seriously doubt that, unless the firm is one of those that relies
> upon volume business from "one off" sole inventors and drafts
> applications and claims that are either not infringeable or trivially
> circumvented just to get the revenue, in which case, I say good
> riddance to bad rubbish, and when such an inventor comes to me to
> assert a patent from such a firm that filed in DOCX and the patent is
> hosed because of what the PTO did, I will tell them to sue the firm
> who did so for malpractice.
>
> *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 4:30 PM, Randall Svihla via Patentcenter wrote:
>
> Some firms might lose all of their clients in response to such an
> ultimatum.
>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com>
> <mailto:patentcenter-bounces at oppedahl-lists.com> *On Behalf Of
> *Richard Straussman via Patentcenter
> *Sent:* Thursday, January 18, 2024 4:17 PM
> *To:* David Boundy <DavidBoundyEsq at gmail.com>
> <mailto:DavidBoundyEsq at gmail.com>; For bug reports, feature
> requests, and tips and tricks about Patent Center.
> <patentcenter at oppedahl-lists.com>
> <mailto:patentcenter at oppedahl-lists.com>
> *Cc:* Richard Straussman <rstraussman at weitzmanip.com>
> <mailto:rstraussman at weitzmanip.com>
> *Subject:* Re: [Patentcenter] Declarations and DOCX filing
>
> Point taken, although if you clearly spell it out the limitation
> of what you are reviewing and why it is not reliable due to what
> the PTO does, I am not sure that there is an implied warranty -
> especially if they acknowledge that they are acting expressly
> contrary to your advice, and that you are doing it as a "courtesy"
> and the charge is simply because time must be expended to do so,
> even though it may be futile.
>
> I am still investigating if NY and NJ law allows one to absolve
> oneself in this type of manner from liability. If not, then it is
> PDF and pay the fee or get new counsel.
>
> BTW - virtually all of my clients qualify as "small entity" so
> they only face a $160 charge, so if cost is a factor, they WILL
> always opt for the PDF route, as it will always be cheaper. The
> "large entity" clients will follow my advice.
>
> *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 4:06 PM, David Boundy 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**
> *
>
>
> 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>
> <mailto: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>
> <mailto:patentcenter at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>
> <mailto: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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> *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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