[Patentpractice] [Patentcenter] two questions about the dreaded .DOCX situation

[Timothy Snowden]

Wow Margaret --  I didn't see that one coming.

Just to make sure I understand:
* you file PDF (no errors)
* the USPTO's 'scanning process' introduces errors
* you file for correction --> the errors are your fault because you 
chose to upload PDF instead of DOCX

If I'm understanding this new reality correctly, it seems like we're 
stuck with Reissue or Petition (maybe) regardless of whether the 
surcharge is paid or not. Maybe this helps make sure a PDF-filer doesn't 
get any benefits from filing a PDF?


On 2/1/2024 3:13 PM, Margaret Polson via Patentpractice wrote:
>
> Fun fact, if you try to get your publication fixed “for USPTO error” 
>  your petition will be denied saying that scanning errors cause by 
> your filing a pdf (this is before the surcharge) are not a USPTO 
> error.  (the error was in the claims, clearly material error)
>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On 
> Behalf Of *David Boundy via Patentcenter
> *Sent:* Thursday, February 1, 2024 8:24 AM
> *To:* For patent practitioners. This is not for laypersons to seek 
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>; Users of Patentcenter 
> <patentcenter at oppedahl-lists.com>; William Ahmed <ahmed.william at ymail.com>
> *Subject:* Re: [Patentcenter] [Patentpractice] two questions about the 
> dreaded .DOCX situation
>
> Yes, you can rely on the incorporated-by-reference parent to correct 
> errors introduced by the PTO.
>
> The existence of a path to get a correction is only half the problem.  
> The other half is that the PTO will not reimburse you or your client 
> for the costs of doing the proofreading, error checking, or correction.
>
> On Thu, Feb 1, 2024 at 8:41 AM William Ahmed via Patentpractice 
> <patentpractice at oppedahl-lists.com> wrote:
>
>     Dear List,
>
>     Question A -->
>
>     Suppose we (i) file the spec in .DOCX for a US non-provisional
>     under 35 USC 111 and
>
>     (ii) 20 minutes after filing on the DAY of filing, we submit a
>     preliminary amendment in PDF on the day of filing,
>
>     does this  PDF preliminary amendment trigger the .DOCX surcharge?
>
>     Question B [unrelated]--> hypothetically, let's say we file .DOCX
>     without the auxiliary pdf - we would NEVER do that, but let's just
>     say hypothetically.
>
>     Let's assume that this patent application is a CON [parent filed
>     in pdf format] of a published/pending US patent non-provisional
>     application,
>
>     and that on page 1 of the .DOCX spec the CON parent is
>     incorporated by reference.
>
>     The patent grants, and there are problems with the granted patents
>     due to USPTO .DOCX technology issues (e.g. one of the equations is
>     converted
>
>     into block symbols or otherwise downgraded). I have no AUX-PDF to
>     save me in this situation.
>
>     Would the incorporation-by-reference save the situation?
>
>     Thank you,
>
>     Bill
>
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