[Patentcenter] Declarations and DOCX filing
Carl Oppedahl
carl at oppedahl.com
Thu Jan 18 20:25:45 EST 2024
Let's see what the $160 or $400 flat fee needs to cover:
* practitioner starts with D1 DOCX file, prepares aux-PDF
* practitioner commences e-filing project, receives D2 DOCX file
* practitioner carries out comparison of D1 and D2
* practitioner uploads aux-PDF
* practitioner clicks submit
* practitioner preserves aux-PDF locally in perpetuity
* at 18-month pub, practitioner checks the publication for rendering
mistakes by USPTO
* at issuance, practitioner checks the issued patent for rendering
mistakes by USPTO
I am pretty sure that to cover these tasks, the professional-fee charge
would need to be a lot more than $400. I'd guess that at normal
practitioner billing rates this needs to be more like $3000.
I also suggest that the flat fee would need to cover the added
professional liability risks associated with:
* being accused of getting the D1-D2 comparison wrong
* being accused of uploading an aux-PDF that fails to match the D1 file
* note that you will never be able to prove exactly which D1 file you
uploaded, since its name and file size and message digest will be
missing from the ack receipt, so you will never be able to prove
that your aux-PDF file really did match the D1 file
* being accused of failing to do the check of the 18-month pub
thoroughly enough
* being accused of failing to do the check of the issued patent
thoroughly enough
* misplacing or accidentally deleting the locally preserved aux-PDF
file before the expiration of the patent plus six years of
litigation statute of limitations plus any PTE
* accidentally modifying the locally preserved aux-PDF file so that it
differs by even one bit from what it was before, thus guaranteeing
that it will no longer match the message digest that appears in the
ack receipt
On 1/18/2024 4:43 PM, Katherine Koenig wrote:
> How about either (1) the fee + PDF or (2) DOCX + $160/$400 flat fee
> for reviewing/comparing docs at filing? I think most clients would opt
> for the PDF option.
>
>> On Jan 18, 2024, at 6:17 PM, Carl Oppedahl via Patentcenter
>> <patentcenter at oppedahl-lists.com> wrote:
>>
>>
>> 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
>>>
>>> <image001.jpg>
>>>
>>> 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
>>> addressee(s) and may contain confidential attorney-client privileged
>>> communication and/or attorney work product. Any review, use,
>>> distribution or disclosure without the permission of the author of
>>> the 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.
>>>
>>> --
>>> Patentcenter mailing list
>>> Patentcenter at oppedahl-lists.com
>>> http://oppedahl-lists.com/mailman/listinfo/patentcenter_oppedahl-lists.com
>>>
>>>
>>>
>>> --
>>>
>>> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>>>
>>> <image002.jpg>
>>>
>>> <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
>>> <mailto:dboundy at potomaclaw.com>_|
>>> _www.potomaclaw.com <http://www.potomaclaw.com>_
>>>
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>>> <http://ssrn.com/author=2936470>
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>>>
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>>>
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>>> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>>>
>>> <image002.jpg>
>>>
>>> <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 <mailto:dboundy at potomaclaw.com>_|
>>> _www.potomaclaw.com <http://www.potomaclaw.com>_
>>>
>>> Articles at http://ssrn.com/author=2936470
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