[Patentcenter] Risk mitigation for DOCX filings

[Krista Jacobsen]

TL;DR:
(1) What do you think about the idea of making a video recording of a DOCX
filing to create an audit trail?
(2) Does anyone want to collaborate on a DOCX "assumption of risk"
disclosure to send to clients who instruct the practitioner to file in DOCX?

If I were the one making filing decisions, I would file every application
subject to the non-DOCX penalty in PDF format, pay the penalty, and pass
the expense through to the client.

Exactly zero clients want to pay the penalty. But many clients understand
that, like getting a colonoscopy, paying the penalty is wise to reduce
their risk of a bad outcome.

That said, I am probably not alone in having large-entity clients who are
sophisticated and have a grasp of the risks but for whom paying an
additional $400 per application is not financially feasible due to the
number of applications being filed. These clients may instruct their
practitioners to file as DOCX, and maybe do some spot checking of the
USPTO-generated files to make sure there are no obvious problems, but they
will not pay the $400 penalty, and they will not pay for the extra time for
line-by-line checks of the USPTO-generated DOCX file (the one Carl calls
D2) or the USPTO-generated PDF file (the one Carl calls P2).

There are two parties at risk in this scenario: (1) the practitioner, and
(2) the applicant.

To eliminate the practitioner's (additional) risk, maybe the practitioner
could pay the $400 penalty on the client's behalf. And maybe doing so would
be ethical (though we might need a state bar opinion on that). But even if
ethical, paying the client's non-DOCX penalties would amount to a pay cut
for the practitioner, especially if the practitioner files a lot of
applications for the client. Not appealing.

The practitioner is at risk in this scenario only because (a) the USPTO has
designed and forced a stupid, ill-conceived filing regime onto its
"customers" (more like adversaries these days), and (b) the client has
chosen an approach that the practitioner explicitly warned was a bad idea
(but, as far as I can tell, is not illegal or unethical).

The practitioner's risks are manageable up to the point of clicking the box
where the person filing the application agrees that D2 is "the"
application. Specifically, the practitioner has control of the
applicant-generated DOCX file (the one Carl calls D1) and the
applicant-generated auxiliary PDF (the one Carl calls P1). After those
files have been uploaded, however, the practitioner has no way to control
risk, because the USPTO discards D1 and processes P1, and what the USPTO
does with D2, P1, and P2 after that is entirely out of the practitioner's
control. (Even if D2 looks correct today on your computer, it might not be
correct in 1.5 or 3 years when rendered on the USPTO's computer.)

In my view, it is not fair to hold the practitioner responsible for
whatever consequences flow from the USPTO's (mis-)handling of the files, as
long as the practitioner uploaded the correct D1 and P1, and the client was
warned about what could happen and still chose the DOCX path. (I realize
what is fair and what actually happens can be quite different, but humor me
here.)

Going back to the client that instructs the practitioner to file in DOCX
with an auxiliary PDF file and just do a cursory review of D2: I've been
spending an absurd amount of time thinking about whether there is a way to
prove that the practitioner/firm/filer did exactly what the client asked,
given that the USPTO discards D1 and processes P1. In other words, can I
find a way to prove that I did in fact upload D1 and P1 to the USPTO, and I
did do a cursory check of D2 as the client requested?

What about recording the filing process and, without any break in the
video, also recording my post-filing reporting of the application filing to
the client (which includes both D1 and P1)? (This is easy on a Mac:
command+shift+5, then start a recording.) Then the client has its own
copies of exactly what I uploaded as D1 and P1, and I have a video to prove
that I did indeed upload D1 and P1 to the USPTO. What happens after that
point is out of my control, and I should not be held responsible for it,
given that this is the filing path the client chose.

Of course, I would have to save this video file for a very long time, along
with D1 and P1, but let's assume I can do that. I think this process
*might* be enough for me to feel comfortable that I could at least prove
what I actually uploaded to the USPTO. Am I missing anything?

I posted a while back about the idea of having clients who insist on DOCX
filing agree in writing that they understand the risks and are assuming
them. It seems to me that if I had such an agreement, and a video to prove
that I uploaded what the client asked me to upload, the client will have a
(harder) time arguing later that whatever comes out of the USPTO as a
consequence of the DOCX filing was somehow my fault.

Would anyone be interested in collaborating on such an "assumption of risk"
disclosure/agreement? I also welcome comments on the analysis above.

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com
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