[Patentcenter] Risk mitigation for DOCX filings

[Neil R. Ormos]

Krista Jacobsen via Patentcenter wrote:

> 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? [...]

> 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 [...]
> 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). [...]

Some additional considerations:

If a practitioner plans to file an aux-PDF, will the client authorize and pay for the marginal cost of its creation, upload, and preservation for perhaps 30 years?  Or does the practitioner expect to eat that cost?

If the client will not pay for the extra time for a line-by-line comparison of D2 against D1, is the practitioner nonetheless obliged to perform the comparison anyway as a standard element of patent practice?  IIRC, PTO guidance instructs or at least advises filers to check both the feedback document and D2 (I don't recall the exact words).  Even if it is not in a /rule/, does the guidance impose a duty to compare that the client cannot dispense with by instruction?  Will that be answered the same way in a malpractice case as it is in proceedings before OED or an attorney regulator?

The cost of long-term preservation of digital artifacts is non-trivial. If something bad happens, and the preservation fails, decisions about how to preserve the artifacts that were eminently reasonable at the time will be subject to fiat-style second-guessing to the detriment of the practitioner.

> 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.)

While the PTO's mangling of the various files is a significant risk, the separate, additional risk of mistake in the practitioner's office should not be ignored.

Compared to traditional PDF filing, additional risk arises from the steps of creating the aux-PDF and uploading the corresponding pair of aux-PDF and DOCX files.

We don't yet know how closely the aux-PDF must match D1 in order that a rule 82 petition seeking to correct the application in reliance on the aux-PDF be grantable.

For example, will the PTO deny a Rule 82 petition seeking to correct the DOCX on the basis that the metadata in the aux-PDF shows it was created long before the filing date or long before any date metadata in D1?

Suppose the aux-PDF contains a mis-spelled word, but the corresponding word was correctly spelled in D1.  Will that discrepancy be enough for the PTO to conclude that the aux-PDF and D1 do not match, and therefore deny the Rule 82 petition, which is "decided in accordance with the merits of each situation [...] subject to such other requirements as may be imposed"?

Also, although the practitioner can theoretically control the various in-their-own-office risks before pressing Submit, no one is perfect.  Adding steps that are especially sensitive to mistake increases risk.

IMO, this is especially the case at smaller firms, where the practitioner not only drafts the application, but also performs the ministerial tasks of document management and filing, without the aid of a second pair of eyes to help catch mistakes.  Where the application has been subject to an extensive series of revisions, culminating in many hours of work on the filing deadline day, where every page has been seen dozens of times and, possibly, many computer files with similar names are present, and when filing is happening late in the evening, the risk of mistake is higher, even for the smartest, most detail-oriented and diligent practitioner.

> [...] 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)?  [...]

Even with the video recording, how will you connect any computer file artifacts to what was actually uploaded to the PTO in the filing session and what was sent to the client?

If you file an aux-PDF, the PTO calculates the checksum (or "message digest") of the uploaded file, and you can do the same locally, and if you keep an unmodified copy of the aux-PDF file, the checksums will continue to match.  Same applies to PDF drawings.  In that case, how would the video recording provide a benefit?

Unfortunately, the PTO does not report the checksum of the D1 that you upload, but your locally-calculated checksum might still be useful to demonstrate that what you uploaded to the PTO is the source from which the aux-PDF was generated, and is exactly what you later sent to the client.  Perhaps in the video recording, you can exhibit the the checksum calculation of D1 at several instances--e.g. before filing when you generate the aux-PDF, and immediately after filing--and you can include the checksum with the file when you report it to the client.  Would such a video have evidentiary value?