[Patentcenter] Declarations and DOCX filing

[Benjamin Keim]

Jim,

Tell me more about the possible issues you see with the inventor declaration more precisely specifying the document the inventor reviewed when deciding to sign a declaration. Yes there would be a distinction. The distinction introduced by any changes made by the USPTO system to the document reviewed by the inventor. The declaration modifications I'm thinking about would limit the inventor's statement to the document he/she reviewed not that as modified by the USPTO.

If the patent owner later wanted to assert that the changes were introduced by the USPTO, the evidence would not just be a practitioner's assertion but would also be the signed statement by the inventor indicating this is what I reviewed and approved. The practitioner/client would have that same file with the same hash saved in their records.

I guess that opens up the question of what if the practitioner fiddled with the document after the inventor signed the declaration and before uploading to Patent Center. More practitioner liability.

Setting aside our potential exposure with DOCX filing, it just really doesn't sit well with me that an inventor could review a spec with his/her fancy equation that describes the invention, agree to sign the declaration, and then the record copy of the application becomes something with a mis-formatted equation filled with little boxes. I would feel really bad for the inventor on the witness stand with opposing counsel waving around a print out of the specification corrupted by the USPTO and a copy of the signed declaration.

I also wonder, for any powers that might care, if inventors potentially put in this situation would be viewed with more sympathy than us practitioners.

Or course the simply way to avoid this is PDF filing. But for one client I work with, I know they will file in DOCX and there will be a lot of inventors signing declarations based on documents that will not be the same ones saved in the USPTO system.

-Ben

Benjamin A. Keim
(206) 920-9038
ben at newportip.com<mailto:ben at newportip.com>

From: Jim Larsen <jim at larsen-ip.com>
Sent: Thursday, January 18, 2024 12:20 PM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: Benjamin Keim <ben at newportip.com>
Subject: Re: Declarations and DOCX filing

I can't speak for the courts or the PTO, but I would argue that a DOCX application document submitted to the USPTO and a PDF rendering thereof reviewed by an inventor are not distinct applications unless something went horribly wrong in the submission process.  Not that such catastrophic changes couldn't happen, but the unintentional aspect of such changes would likely mitigate any penalties.

I would think by adding file name, size and SHA-512 you'd be MORE likely to have issues during any challenge to the validity of the application/patent, as you'd potentially be giving an opposing party evidence of distinctions.

Best regards,

-Jim

James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.Larsen-IP.com>

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From: Patentcenter <patentcenter-bounces at oppedahl-lists.com<mailto:patentcenter-bounces at oppedahl-lists.com>> on behalf of Benjamin Keim via Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Date: Thursday, January 18, 2024 at 12:06 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: Benjamin Keim <ben at newportip.com<mailto:ben at newportip.com>>
Subject: [Patentcenter] Declarations and DOCX filing
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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