[Patentpractice] USPTO taking next step in transition to DOCX

Fri Dec 22 10:24:12 EST 2023

Here's a thought.  Does anyone see a bug that I don't?

Step 1.  File the PDF specification and PDF drawings as a provisional, just
as you always have.  Don't pay fees.

Step 2.  An hour later, file your nonprovisional as a "filing by reference"
filing.

It seems to work under the relevant statute and regulation --
     35 U.S.C. § 111(c) -- https://www.law.cornell.edu/uscode/text/35/111
     37 C.F.R. § 1.57(a) -- https://www.law.cornell.edu/cfr/text/37/1.57
The Director can then require you to file a spec.

The incremental cost is the time to file the provisional, and the "late
parts" surcharge of § 1.16(f).  I don't see why you can't avoid the
surcharge by filing the spec and drawings with the non-provisional, even
though you click the "filing by reference" box -- the regulation says that
if you BOTH click the "by reference" box and file the spec and drawings,
the "by reference" wins.   I don't think the non-provisional has to claim
priority to the provisional -- all you care about it having it in some
office's equivalent of PAIR so you can "by reference" to it.  So you don't
have to pay the fees for the provisional.

On Fri, Dec 22, 2023 at 9:37 AM Timothy Snowden via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Also, even if they did accept it, wouldn't they degrade the DOCX figures
> (because you can't tag the Spec as non-black-and-white-figures)?
>
> I have thought of uploading an Appendix (copy of Spec) as
> non-black-and-white FIGURES, that way it's literally incorporated by
> reference into the application, and part of the application body if needed.
>
> On 12/21/2023 3:47 PM, Stephen M. Nipper via Patentpractice wrote:
>
> Brilliant, but I'm not sure that such a .docx would pass the upload
> verification.  For example, there's a defined error/warning for:
>
> FIGURES_IN_SPECIFICATION Figures have been detected in the specification.
>> Please review and revise if necessary.
>
>
> This has a list of the errors/warnings:
> https://www.uspto.gov/sites/default/files/documents/DOCX_Feedback_Errors_and_Warnings.pdf
> .
>
> Steve
>
> On Thu, Dec 21, 2023 at 2:16 PM David Boundy via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> So what are the options for passive aggressive compliance that forces the
>> PTO to use the PDF just as they always have?
>>
>> Ten years ago, there was a way to open a PDF, and "Save as Word" and what
>> you'd get was pages that were each bitmap images, just stored in a .doc
>> container instead of in a .pdf container.  Totally useless.   Ten years
>> ago, I had a legal assistant that would do that -- which drove me crazy at
>> the time,   Now it's PERFECT.
>>
>>
>>
>>
>>
>>
>>
>> On Thu, Dec 21, 2023 at 3:59 PM Carl Oppedahl via Patentpractice <
>> patentpractice at oppedahl-lists.com> wrote:
>>
>>> On 12/21/2023 1:29 PM, Tim Ackermann via Patentcenter wrote:
>>> > What if I accidentally filed PDF images of my Abstract, Specification,
>>> > and Claims as "Figures, other than black & white"? And then amended
>>> > the drawings to remove those accidental images?
>>>
>>> I am migrating this over to the Patent Practice listserv which is the
>>> right place for it.
>>>
>>> The Patentcenter listserv is for bugs and feature requests and
>>> workarounds relating to Patent Center.
>>>
>>> Now to return to the topic.
>>>
>>> So what we are talking about is the process of submitting a trusted PDF
>>> along with the untrusted Microsoft Word file.  The reason for handing in
>>> the untrusted Microsoft Word file is to avoid having to pay the $400
>>> penalty.  The reason for handing in the trusted PDF file is, well,
>>> because it can actually be trusted.
>>>
>>> Except not.  The first thing that the USPTO does with your trusted PDF
>>> is dismember it into TIF images, one per PDF page. And then the USPTO
>>> carries out halftoning and resizing.  This is the native storage format
>>> in IFW.  Later if you click to see your trusted PDF, you will find that
>>> what IFW gives back to you as a PDF is not bit-for-bit the same as the
>>> PDF that you uploaded.  The PDF that the IFW gives back to you will,
>>> among other things, have a non-identical message digest (hash).
>>>
>>> So yes, it seems to me that the filer who wants to avoid the harm caused
>>> by the halftoning and resizing would definitely want to index the
>>> trusted PDF as "non-black-and-white drawings".  That way the PDF is
>>> preserved bit-for-bit.
>>>
>>> --
>>> Patentpractice mailing list
>>> Patentpractice at oppedahl-lists.com
>>>
>>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>>
>>
>>
>> --
>>
>>
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>>
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>>
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