[Patentpractice] USPTO taking next step in transition to DOCX

[Neil R. Ormos]

David Boundy wrote:
> [...]
>> [...]
>>> David Boundy wrote:

>>>> So what are the options for passive aggressive compliance that forces the
>>>> PTO to use the PDF just as they always have? [...]

> 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.  *sec  111(c) -- https://www.law.cornell.edu/uscode/text/35/111
> 37 C.F.R.  *sec  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 sec 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.

I'm sure you've already thought of these things, but I have a few questions:

1.  If you file using the
    specification-and-drawings-substituted-by-reference procedure
    of Rule 57(a), why doesn't the Rule 16(f) surcharge apply
    regardless of whether the spec and drawings are supplied with
    the filing?

    Rationale: Among the cases to which the surcharge of Rule
    16(f) applies is "an application filed by reference to a
    previously filed application under Sec. 1.57(a)."  That case
    is not conditioned on late filing of the specification and
    drawings.

2.  (a) When you eventually file the specification in the
        non-provisional application, what's to stop the Director
        from requiring that the specification be filed in DOCX
        format?

        Rationale: 35 USC 111(c) explicitly authorizes the
        director to prescribe "conditions" under which a copy of
        the specification and any drawings of the previously
        filed application shall be submitted.

    (b) Why wouldn't the Director be deemed already to have made
        that requirement?

        Rationale: Rule 52(a)(5) requires that papers "submitted
        electronically to the Office must be formatted and
        transmitted in compliance with the USPTO patent
        electronic filing system requirements."


    (c) If the specification is not submitted in DOCX format,
        what's to stop the Director from applying the fine of
        Rule 16(u)?

        Rationale: Rule 16(u) provides for an "additional fee for
        any application [...]  where the specification, claims,
        and/or abstract does not conform to the USPTO
        requirements for submission in DOCX format."  Neither the
        provisional nor the non-provisional in this scenario
        contain a specification that conforms to the DOCX
        requirements.

3.  Even if no additional fees are due, what are the net savings,
    over paying the Rule 16(u) fine, when you consider the time
    and professional liability risks?

    You have acknowledged the incremental cost for the time to
    file the provisional and to file the specification and
    drawings in the non-provisional.  I think there's some
    additional time and effort involved in ensuring that the
    provisional and non-provisional submissions are
    /correct/--doing two related submissions with more files
    being uploaded, etc., increases the risk of error--and so
    there's also some incremental professional liability risk.
    Plus, the plural submissions have to be reported to the
    client with explanation (including any remission of billing).
    Even if it's a form letter, you have to remember to include
    it and may have to respond to client requests for
    clarification.

    If you just file in PDF, without the chicane of
    incorporation-by-reference-from-a-provisional, and you pay
    the Rule 16(u) fine, the professional liability risk is
    lower, and the other costs of juggling and reporting plural
    submissions are replaced (liquidated?) by the fine, which is
    ascertainable in the rule and might be discounted for
    small-entity clients.