[Patentpractice] USPTO taking next step in transition to DOCX

[Carl Oppedahl]

What you say is quite correct.  One must preserve locally a copy of the 
aux-PDF that was uploaded.  The USPTO cannot be trusted to preserve it 
bit-for-bit.

One might consider uploading the aux-PDF into SCORE, as a sort of 
offsite backup.  Call it a non-BW drawing.  On present (undocumented) 
practice, the USPTO does preserve such files bit-for-bit.  There is some 
chance, however small, that the USPTO might have the self-control to 
avoid betraying the applicant by deleting it or by tampering with it.

On 12/29/2023 5:38 PM, Rick Neifeld via Patentpractice wrote:
> 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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