[Patentpractice] Feedback document mis-placing comments
Randall Svihla
rsvihla at nsiplaw.com
Thu Dec 19 20:47:30 UTC 2024
Hi, Rick
Where does it say you can file multiple AUX.pdfs in an application?
Here, you filed the application in PDF format. The USPTO did not contemplate filing an AUX.pdf when you file the application in PDF format. There is no need for an AUX.pdf in this situation since the PDF you filed is exactly what you want and is not mangled by the USPTO, other than to convert it to TIFF.
Of course, whoever wrote the notices about the AUX.pdf never envisioned your situation, and so never provided a warning that filing multiple AUX.pdfs will result in each subsequent AUX.pdf overwriting the previous AUX.pdf. It is possible that they were not even aware this is what would happen.
Furthermore, the first notice you posted says this:
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.
This clearly applies only to the initial filing of an application, not the filing of a substitute specification in response to a Notice to File Corrected Application Papers.
See this discussion from 11/27/2024 in this listserve:
Hi, Craig
So did you file three AUX PDFs, i.e., a spec AUX PDF, a claims AUX PDF, and an abstract AUX PDF?
My guess is that the system only permits you to upload a single AUX PDF, which is supposed to include the spec, claims, and abstract.
So you uploaded the spec AUX PDF, then uploaded the claims AUX PDF, which superseded the spec AUX PDF and pushed it to regular PDF, then uploaded the abstract AUX PDF, which superseded the claims AUX PDF and pushed it to a regular PDF. So you ended up with a spec PDF, a claims PDF, and an abstract AUX PDF.
Why do you upload the spec, claims, and abstract separately?
Best regards,
Randall S. Svihla
NSIP Law
Washington, D.C.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Craig McLaughlin via Patentpractice
Sent: Wednesday, November 27, 2024 8:00 PM
To: Timothy Snowden <Timothy at thompsonpatentlaw.com>
Cc: Craig McLaughlin <cmlaw at jps.net>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] "Auxiliary PDF"
All in the same filing, I filed each docx separately including specific, claims and abstract and, in addition, filed a separate PDF of the spec., claims and abstract so I’d have a master on file. The abstract somehow ended up as a AUX.PDF, but the spec and claims did not have that “AUX” file extension.
Craig McLaughlin
Sent from my iPhone
Best regards,
Randall S. Svihla
NSIP Law
Washington, D.C.
From: Rick Neifeld <richardneifeld at gmail.com>
Sent: Thursday, December 19, 2024 3:15 PM
To: Randall Svihla <rsvihla at nsiplaw.com>
Cc: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Feedback document mis-placing comments
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<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Rick Neifeld <richardneifeld at gmail.com<mailto: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<mailto: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<mailto: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.
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Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
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