[Patentcenter] Query - Spec Version for Foreign Filing

Thu Jan 18 18:28:35 EST 2024

Yeah, the inspect document feature won't do what you want. There are three things you should do:
1. Remove all bookmarks
2. Convert fields (cross-references, etc.) to text
3. Convert auto-numbering to text.

I should note that the only thing I don't change to plain text are the page numbers in the footer. The page numbering is formatted as "Page _ of _". I leave it as a field because when the USPTO breaks the file into the different parts, the auto-numbering of each DOCX file is updated. This the page numbering on the individual abstract Docx file is listed as "Page 1 of 1" instead of "Page 35 of 35" because it was the last page of the original Word document (note the APP.TEXT file in Patent Center will show the abstract as Page 35 of 35). Anyway, this is a matter of personal preference.

The first two things above you can do without a macro. The third requires a macro. To remove bookmarks, type bookmark in the search bar in Word (top of the window), select "insert a bookmark," and delete all the bookmarks. Be sure the box for hidden bookmarks is checked.
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To convert fields to text, select the text (if you want to convert all fields in the document to text, then select all the text in the document using ctrl+a) and with the text selected press ctrl+shift+F9. If you have fields in the header/footers, then you have to do them separately.

To change the auto-numbering to text (this is the auto-numbering of the paragraphs, claims, etc.) you will need to use the following macro:
a. Open the document. (You may want to open a copy of the document so that you don't mess up the original document.)
b. Press Alt+F11. Word displays the VBA Editor.
c. Press Ctrl+G. This opens the Immediate window. (If you get any other type of dialog box, such as the Find and Replace dialog box, then you aren't working in the VBA Editor; you are still in Word. Close the dialog box, make sure the VBA Editor is active, and then repeat this step.)
d. Type the following in the Immediate window:
    ActiveDocument.Range.ListFormat.ConvertNumbersToText
e. Press Enter.
f. That's it; all the auto-numbered lists in the document will be changed to manual numbering.
g. If, instead, you want to affect only a limited portion of the document, make sure that portion is selected before you start the steps and then use this command in step d:
    Selection.Range.ListFormat.ConvertNumbersToText

I streamlined the above processes by creating macros and assigning them buttons in Word (the image below shows the buttons for the Macros). This way I don't have to remember all the stuff above.
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Scott Nielson

801-660-4400

________________________________
From: Robert Blaha <rblaha at srtslaw.com>
Sent: Thursday, January 18, 2024 3:43 PM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: RE: Query - Spec Version for Foreign Filing

Scott,

If it is not too much trouble can you explain how you remove all bookmarks, convert auto-numbering and cross-references to text before uploading the Word (*.docx) file? I use the built-in “Inspect Document” function of Word and configure the same to remove everything with the exception of headers and footers. Despite taking that step the USPTO continuously reports that it is removing bookmarks from my upload file.

Best regards,

Bob

Smith Tempel Blaha LLC

Email: rblaha at srtslaw.com

From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via Patentcenter
Sent: Thursday, January 18, 2024 5:35 PM
To: 'users of Patentcenter' <patentcenter at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Patentcenter] Query - Spec Version for Foreign Filing

I've been filing Docx applications for quite a while now. My process is to upload the docx file I created, download the USPTO scrubbed version, compare the two with the built-in compare function of Word, and if there are no differences, then I file the application. At this point, the comparison rarely reveals any differences in the text (mostly because I preemptively remove all bookmarks, convert auto-numbering and cross-references to text, etc., before uploading the Word file).

I keep copies of both what I uploaded and the USPTO scrubbed version in the file. The USPTO scrubbed version matches the hash on the filing receipt.

As for foreign filing, I usually just send the USPTO copy because it has been scrubbed of any metadata. However, the text in both files is the same so I don't think it matters.

Scott Nielson

801-660-4400

________________________________

From: Patentcenter <patentcenter-bounces at oppedahl-lists.com<mailto:patentcenter-bounces at oppedahl-lists.com>> on behalf of pbrisky--- via Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Sent: Thursday, January 18, 2024 2:45 PM
To: 'users of Patentcenter' <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Cc: pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: [Patentcenter] Query - Spec Version for Foreign Filing

Hi

Has anyone given any thought, or, do they have a current practice they would like to share about the version of the specification of a DOCX filed case that will be used for foreign filing (based on the US filed DOCX case)?

I am interested in hearing people’s thoughts about this …

Pamela Cei Brisky

Senior Patent Paralegal, Docketing Manager

Fujitsu North America, Inc.| Fujitsu Intellectual Property Center

pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112

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