[Patentpractice] USPTO taking next step in transition to DOCX
Rick Neifeld
rneifeld at neifeld.com
Fri Dec 29 19:38:16 EST 2023
I covered this issue in my talk at the NAPP annual meeting, last year.
After rather exhaustive testing of new nonprovisional utility
application filings using DOCX documents and auxiliary PDFs for the
disclosures, via Patent Center. See, section "III.G Performing A Pre
Filing Review Using The Patent Center-Generated PDF, Before Filing" in
"Avoiding Failed Patent Application Filings, 2023," available from:
https://www.neifeld.com/advidx.html
I concluded that the best option for the filer (that means you and me)
is to "retain their*uploaded copy of the auxiliary PDF* in their records
in association with the EAR. That will enable the filer to prove the
auxiliary PDF in their records is the auxiliary PDF uploaded to Patent
Center at the time of filing, and therefore prove the content of the
filed disclosure, regardless what the PTO’s version of the auxiliary PDF
shows."
This is because the EAR's "Digest" for the application's filing shows
the filename of the uploaded auxiliary pdf, and the SHA-512 hash value
for the uploaded auxiliary pdf. Therefore, the filer can prove at a
later date, if it becomes necessary to correct the PTO's understanding
of the filed disclosure, that the Auxiliary pdf uploaded was in fact
uploaded as part of the "submission" forming the filing of the
application. Because, as we all know, the USPTO's "Documents and
Transactions" does not show the filename of the uploaded Auxiliary pdf
and does not have a file that has the same SHA-512 hash value as the
uploaded auxiliary pdf. (So even if that putative auxiliary pdf residing
in the Documents and Transactions tab in Patent Center is accurate at
the time of filing, we cannot know if at some point in time after filing
that it has been further changed to become an inaccurate version of the
disclosure as actually filed.)
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rneifeld at neifeld.com
and richardneifeld at gmail.com
Web: https://neifeld.com/
This is a confidential communication of counsel. If you are not the
intended recipient, delete this email and notify the sender that you did so.
On 12/22/2023 3:26 PM, Neil R. Ormos via Patentpractice wrote:
> 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.
>
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