[Patentpractice] filing by reference - avoids the non-docx charge or not?

[Scott Nielson]

I don't know whether filing by reference avoids the docx fee. However, if you do file by reference, be sure to also file a miscellaneous letter explaining that you are filing by reference (explicitly call out the relevant section of the ADS where you file by reference and cite the applicable rules and MPEP section that discuss filing by reference) or the USPTO clerk who picks it up might mistakenly issue a notice of nonprovisional filing-no filing date assigned.

I've filed four cases by reference with only an ADS and had two processed correctly and two mistakenly receive a notice of nonprovisional filing-no filing date assigned (not fun).

Scott Nielson
801-660-4400
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Bob Barber via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, December 5, 2024 6:26:05 AM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com>
Cc: Bob Barber <bobbarber1970 at yahoo.com>
Subject: [Patentpractice] filing by reference - avoids the non-docx charge or not?

I'm sure this was discussed previously but I don't recall the answer: does filing by reference avoid the non-docx charge? I assume not, but thought I'd ask. I have to file a continuation in a case in which I don't have a docx version of the spec but only a pdf version.

An alternative is to use pdf-xchange to convert the document to docx, and to include the backup pdf upon filing. Since the parent case is incorporated by reference, I can then just file a replacement spec later, viz. the original pdf (rather than proofread the "docx" version, which isn't worth my time or the client's money).

Bob

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