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

[David Boundy]

And if you file by reference, you trigger another fee.  I don't recall the
relative magnitude relative to the DOCX fee.

On Thu, Dec 5, 2024 at 10:27 AM Scott Nielson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
> ------------------------------
> *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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>
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>


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