[Patentpractice] USPTO failing to preserve the AUX-PDF as it promised to do? (was Feedback document misplacing comments)
Carl Oppedahl
carl at oppedahl.com
Thu Dec 19 20:37:02 UTC 2024
Again to state this as clearly as possible ... the USPTO's bait to try
to trick you into filing with DOCX is that you will have an "ongoing
safeguard" because of the AUX-PDF file that the USPTO promised to
preserve for twenty years. Bu if what Randall reports is what the USPTO
really does, then the USPTO is failing to preserve the AUX-PDF, thus
eviscerating the supposed "ongoing safeguard", thus greatly increasing
the malpractice risks of filing in DOCX.
On 12/19/2024 1:15 PM, Rick Neifeld via Patentpractice wrote:
> Thank you for noting that "The USPTO only allows one
> AUX.pdf submission per application, and each subsequent one you file
> overwrites the previous one."
>
> That processing _contradicts the PTO's public statements_ in its
> Notice at "Patent and Trademark Office [Docket No.: PTO–P–2022–0002]
> Filing Patent Applications in DOCX
> Format," at 82 FR 25226, and in its notice at "Extension of the Option
> for Submission of a PDF With a Patent Application Filed in DOCX
> Format," 88 FR 37036.
>
> See 87 FR 25227, left column:
>
> The USPTO continues to work with
> its stakeholders to transition to the
> DOCX format. Through this notice, the
> USPTO is providing applicants with the
> option to submit an applicant-generated
> PDF of the application along with the
> validated DOCX file(s) when filing an
> application in Patent Center, from the
> effective date of this notice through
> December 31, 2022 (the temporary
> period). This option will not be
> available for applications filed via EFS-
> Web. This will allow applicants to gain
> confidence in the reliability and
> accuracy of the USPTO system when
> filing applications in DOCX format, and
> safeguard the applicant should any
> conversion discrepancies have taken
> place.
>
> and see 88 FR 37036, at 37036 (Duration)
>
> The option to submit
> an applicant-generated PDF of a patent
> application along with the validated
> DOCX file(s) when filing an application
> in Patent Center, as discussed in this
> notice, is being extended until further
> notice.
>
> and at 37037, left column:
>
> In April 2022, the USPTO announced
> that, for a period of time ending
> December 31, 2022, it was providing
> patent applicants with the option to
> submit a back-up, applicant-generated
> PDF version of the application along
> with the DOCX file(s) when filing an
> application in Patent Center. See Filing
> Patent Applications in DOCX Format,
> 87 FR 25226 (April 28, 2022) (April
> 2022 Notice). The goal of providing
> such an option was to encourage more
> applicants to begin filing patent
> applications in DOCX format. In
> particular, the USPTO anticipated that
> allowing applicants to submit a back-up
> PDF version of the application—without
> incurring additional fees—for a
> temporary period would encourage
> applicants to file in DOCX while
> ensuring that if any discrepancies were
> discovered, the back-up version could
> be used to correct the discrepancies.
>
>
> and at 37037 spanning left and center columns:
>
>
> However, in view of stakeholder
> requests, the USPTO will now keep
> copies of the applicant-generated PDF as
> part of the permanent record, regardless
> of whether a petition is filed. For
> example, for granted patents, the
> USPTO will keep copies of the
> applicant-generated PDF for at least 25
> years after the patent grant before
> transferring it to the National Archives
> and Records Administration.
> With the changes detailed above,
> patent applicants choosing to submit an
> applicant-generated PDF with the
> validated DOCX file(s) when filing an
> application in Patent Center will have
> an ongoing safeguard should any
> unexpected conversion discrepancies
> occur during the filing process. ...
> As discussed in the April 2022
> Notice, patent applicants who choose to
> submit an applicant-generated PDF with
> the validated DOCX file(s) when filing
> an application in Patent Center will not
> have to pay additional fees, such as an
> application size fee, as a result of filing
> the applicant-generated PDF and, on
> petition, will be able to rely on the
> applicant-generated PDF if a
> discrepancy occurs during the filing
> process.
>
> There is no reasonable interpretation of this guidance that is
> consistent with your indication that that the PTO actually does is,
> with "each subsequent one [SIC; AUX.pdf] you file [Patent Center]
> overwrites the previous one."
>
> BR, Rick
>
>
>
>
>
>
>
>
>
>
>
> On Thu, Dec 19, 2024 at 2:11 PM Randall Svihla <rsvihla at nsiplaw.com>
> wrote:
>
> Hi, Rick
>
> You wrote:
>
> 3. Regarding AUX.pdf submissions, whether Patent Center stores all
> AUX.pdf submissions? That is, whether subsequent submission with
> document description "Specification" overwrite or otherwise result
> in Patent Center discarding prior "AUX.pdf' submissions.
>
> The USPTO only allows one AUX.pdf submission per application, and
> each subsequent one you file overwrites the previous one.
>
> Best regards,
>
> Randall S. Svihla
>
> NSIP Law
>
> Washington, D.C.
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com>
> *On Behalf Of *Rick Neifeld via Patentpractice
> *Sent:* Thursday, December 19, 2024 12:48 PM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Rick Neifeld <richardneifeld at gmail.com>
> *Subject:* Re: [Patentpractice] Feedback document mis-placing comments
>
> Follow-up on my post below.
>
> Yesterday, I received a Notice of Incomplete Reply to the Notice
> To File Corrected Application Papers. And I filed a response to
> that Notice of Incomplete Reply.
>
> The Notice of Incomplete Reply asserted that the Reply to the
> Notice To File Corrected Application Papers failed to include "a
> clean version without markings."
>
> My reply to that Notice was a traverse, asserting that a clean
> version without markings had been filed as part of the Reply to
> the Notice To File Corrected Application Papers, and provided
> proof from the EAR of the name of the file, and the SHA-512 hash
> value associated with the name of the file. And that the file
> name included "CleanCopy" and the transmittal letter and remarks
> specified that file was the required clean copy. And including the
> exact same DOCX file identified by its unique Hash value, as a
> submission, but with the Document Description "Transmittal
> Letter." And in the filing process, I was given an option to
> include an AUX.pdf, so I saved the DOCX file as a pdf, and also
> submitted that as (yet another) AUX.pdf. And the EAR for this
> filing shows, of course, a DOCX document to which PatentCenter
> appended "-DOCX" and the AUX.pdf document, to which PatentCenter
> did nothing to the filename.
>
> Today, I called the PTO, repeatedly, as shown in my
> contemporaneous notes below (filename
> "Troubleshooting_AgentRedacted_XXXXXX.txt"), to obtain
> clarification, and to ensure the PTO does not hold the application
> abandoned, for failure to respond. I raised some interesting
> questions that neither EBC nor the ASU representatives could
> answer. And I await a call back after the ASU agent confers with
> her supervisor. See my questions at the end of the record below.
> My real time notes, the record of these calls, with the agent
> names and my reference number redacted, appears below:
>
> Filename: [Troubleshooting_AgentRedacted_XXXXXX.txt]
> 10:12 AM, Called EBC
> Agent ___, agent number 59
> Given case number 2-00092400.
> Agent indicates he cannot address whether a marked up copy is
> present in the official file in Patent Center for this application.
> Agent indicates only "Application assistance unit: 571272400" can
> address my questions.
> Agent transferred me to Application assistance unit: 571272400
> Application Assistance Unit Agent ___, given number 2-00092412
> Agent indicates he cannot see the documents in Patent Center
> identified in the "Documents & transaction history", "Documents" tab.
> 10:31 AM, Agent has put me on hold.
> 11:01 line has hung up (call ended).
>
> 11:03 Calling back. 571272400, Agent ___, answered. Call dropped.
>
> 11:06 Calling back. 571272400,
> 11:07-11:08, approximately 2 minutes of recorded voice message.
> 11:08 Agent ___ answers, provides reference 2-00092412
> 11:09, agent placed me on hold while agent reads notes from
> 2-00092412.
> Discussion with Agent, identify problem.
> 11:15 Agent Response. I cited rule 1.121 requirements. Agent
> unclear regarding rule requirement. Agent places me "on hold".
> 11:16 Discussing "clean copy" requirements. Agent agrees there is
> no rule requirement to place markings on the "clean copy" of a
> substitute specification stating it is a "clean copy."
> Agent states that, at the "top of" clean copy of specification,
> pages must include the phrase "clean copy" on each page, upper top
> right corner, of each page. Upon repeated requests for
> clarification, agent specifies that should be in "a header" (as
> opposed to inside the margins where text of the specification
> resides.)
> 11:19 Discussing "marke up copy" requirements. Agent agent is
> unclear about requirements for a "marked up copy". Agent does not
> see the marked up copy in [whatever she is looking at corresponds
> to the Patent Center] the official file.
> I identified to agent the name of the file that is the marked up
> copy, as including "MarkedCopy" in filename, as shown in the EAR
> and in the actual file named
> "2024-12-15_SubSpec_MarkedCopy_CSfiling2811USfiling_ANJA0024-SPEC.pdf"
> 11:22 Agent places me on hold, again.
> 11:__[??] Agent Clarified: The "marked up copy" does not require
> any additional marking showing it is the "marked up" copy.
> Regarding questions about "Document descriptions" for clean and
> marked up copies of a substitute specification: Agent stated that
> appropriate "Document Description" in Patent Center submissions
> for both clean copy of a substitute specification, and for a
> marked up copy of a substitute specification, is "Specification."
> *******************
>
> After I identified the markings in the submitted marked up copy,
> Agent indicated she needed to speak with a supervisor before
> providing advice on how to resolve Patent Center's lack of
> recognition of the presence of a marked up copy.
> I asked for clarification on the following additional questions
> regarding file format, and AUX pdf.
> Regarding "DOCX" or "PDF" for clean and marked up copy of
> substitute specifications:
> 1. What are the appropriate file formats for a clean copy of a
> substitute specification?
> 2. What are the appropriate file formats for a marked up copy of a
> substitute specification?
> 3. Regarding AUX.pdf submissions, whether Patent Center stores all
> AUX.pdf submissions? That is, whether subsequent submission with
> document description "Specification" overwrite or otherwise result
> in Patent Center discarding prior "AUX.pdf' submissions.
> 11:35 call continuing at this time.
> 11:__[??] Call concluded. Agent stated she intends to call me back
> within 24 hours.
>
> ***********************************
>
> Rick
>
> On Tue, Dec 17, 2024 at 2:25 PM Rick Neifeld
> <richardneifeld at gmail.com> wrote:
>
> Agree. And I will break from ongoing work to add a couple
> comments and questions.
>
> First, I am concerned when I get a specification for filing
> that includes embedded image objects. Those objects normally
> include non ascii characters, and unconventional symbols. For
> example, for communications modulation schemes or quantum
> computing algorithms. I cannot easily reproduce those
> things within a page, in case of a requirement to correct a
> portion of the specification.
>
> I get that sort of stuff from foreign colleagues. So I have
> notified my foreign colleagues. Hopefully they will teach
> their clients to do a better job at providing patent
> easy-to-use disclosures. But I doubt it.
>
> Second, I recently had to respond to a Notice of informalities
> requiring me to formally revise the Figs and spec.
>
> I found the process of responding to be more complex and time
> consuming than in the past, prior to Patent Center and the
> DOCX coercion. And as to the process, I solicit input on what
> I did right, and what I did wrong, and what I did that was
> inconsequential (but perhaps made me feel better), in response
> to the Notice.
>
> An issue I am concerned with is compliance with rule 121,
> substitute specification, in this situation, given Patent
> Center's filing constraints. By rule, the markup is the de
> jure substitute spec. The clean copy is for the convenience of
> the examiner. That is what the rule states, right?. So how do
> you describe, and which form of file, is a best practice, for
> complying with the rules for the substitute specification and
> marked up copy, within the constraints of Patent Center
> submissions?
>
> In this case, I had filed the original application in pdf
> format, for both spec and figs. However, I had in my
> possession the original DOCX from which the pdfs were created.
> So I had options. What I ended up filing in response to the
> Notice were:
>
> Replacement drawing sheets (figures) in DOCX format, with
> document description "Drawings, other than black and white
> line drawings" (At my end pdfs generated by conversion from a
> DOCX are not fuzzy, like what you see on the PTO side, after
> filing a pdf via Patent Center.)
>
> Marked Up copy of the substitute spec, in pdf format, with
> document description "Specification". (I found no document
> description for "substitute specification.")
>
> Clean Copy of the substitute spec, in DOCX format, with also
> with document description "Specification".
>
> But then also a Clean Copy of the substitute spec, in PDF
> format, as the AUX.PDF. (Because you get this option when you
> upload a DOCX and select document description "specification",
> even after the application and its specification has been
> filed on some prior day.)
>
> I also determined the SHA-512 for theAUX.PDF and included that
> value in my transmittal letter (Yes, I still file transmittal
> letters listing what I am filing.)
>
> I also included this note in the Transmittal Letter
>
> "The applicant notes that the USPTO server may revise and
> replace DOCX files the applicant uploads, with revised files,
> prior to entering them into the official file for this
> application.
>
> The applicant notes that the USPTO has not specified exactly
> how the USPTO server does this, and does not always clearly
> specify what those changes are."
>
> In my response, at the end, I included this DOCX centric
> statement:
>
> " While the USPTO relies upon DOCX submission for the
> specification, there are in fact over 40 different versions of
> the "DOCX" specifications, and these file format
> specifications are generated and controlled by the Microsoft
> Corporation. See the publicly available specifications at
> "[MS-DOCX]: Word Extensions to the Office Open XML (.docx)
> File Format."
> Therefore, what the USPTO displays, or what the USPTO examiner
> interprets a specification to contain, based upon a document
> submitted having a DOCX file extension, may differ from what
> the applicant submits. Accordingly the examiner is encouraged
> to review the originally submitted specification, which was
> submitted in pdf format, and therefore is definite and
> reliable as to what the applicant's application, as originally
> filed, discloses, when the examiner examines this application."
>
> So, comments?
>
> Thanks, RICK
>
> On Tue, Dec 17, 2024 at 1:13 PM Carl Oppedahl via
> Patentpractice <patentpractice at oppedahl-lists.com> wrote:
>
> On 12/17/2024 10:48 AM, William Slate via Patentpractice
> wrote:
>
> A comment read:
>
> “This claim appears to not end with a period.”
>
> The area highlighted by the comment was a hard return
> between claims 7 and 8.
>
> I found a period missing at the end of claim 9.
>
> Will
>
> Let's sort of summarize where we are on this.
>
> Anybody who chooses to (incur the risks of using) use DOCX
> as their filing method is putting himself or herself at
> the mercy of the USPTO's proprietary DOCX rendering
> engine. Which as of some months ago was up to version 18,
> something like that.
>
> What we see here is an example of that engine being flaky
> at application-filing time. And yes I have seen many
> other instances of the DOCX rendering engine being flaky
> at application-filing time, in other ways.
>
> What stares me in the face is that this same engine is
> presumably the black box that will typeset the patent
> application for issuance, at some later time down the
> line. By then it might be version 24 or version 36. And
> it might render a square root sign as a smiley face or
> might render a Greek letter mu as a "u".
>
> Meanwhile I imagine there are many practitioners who have
> been ducking the DOCX risks, assuming that the "ongoing
> safeguard" of the auxiliary PDF will somehow permit the
> practitioner to avert what would otherwise be a
> malpractice claim.
>
> But see
> https://blog.oppedahl.com/maybe-uspto-will-clarify-the-docx-safeguard/
> . The USPTO has not answered that letter yet, despite
> almost a year having passed. I suggest that it would be a
> mistake, given the USPTO's deafening silence in response
> to questions about the "ongoing safeguard", to assume that
> the auxiliary PDF will protect against malpractice claims.
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
>
> --
> Best regards
> Rick Neifeld, J.D., Ph.D.
> Neifeld IP Law PLLC
> 9112 Shearman Street, Fairfax VA 22032
> Mobile: 7034470727
> Email: RichardNeifeld at gmail.com;
> This is NOT a confidential and privileged communication. If you are
> not the intended recipient, please delete this email and notify the
> sender you have done so.
>
>
>
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