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

Fri Feb 2 13:29:12 EST 2024

And this is how a little micro symbol changes to a pico symbol and will cause orders of magnitude in damages and liability.  Thank you USPTO.

(4784 days to retirement and counting…)

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Doreen Trujillo via Patentpractice
Sent: Friday, February 2, 2024 12:06 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Doreen Trujillo <DTrujillo at vlplawgroup.com>
Subject: Re: [Patentpractice] [Patentcenter] two questions about the dreaded .DOCX situation

So, they changed the characters in the PDF? THAT is not good.

Doreen

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Margaret Polson via Patentpractice
Sent: Thursday, February 1, 2024 5:48 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: Margaret Polson <MPolson at polsoniplaw.com<mailto:MPolson at polsoniplaw.com>>
Subject: Re: [Patentpractice] [Patentcenter] two questions about the dreaded .DOCX situation

Yes, the outline is correct.  To be clear, it is the published application, not the issued patent, which has always been hard to get them to fix.   But it also means we will have to proof the issued patent very carefully.

For EXTRA fun, it has a bunch of formula in it with exactly the type of characters that are known to cause problems and that is what the errors are in.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Thursday, February 1, 2024 2:47 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: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Subject: Re: [Patentpractice] [Patentcenter] two questions about the dreaded .DOCX situation

What's really sad about it, if this is really what goes on, is that almost certainly what Margaret e-filed was a text-rich PDF (she almost certainly printed to PDF from her word processor).  As such, the USPTO did not need to do OCR at all.  The USPTO could have scraped the computer-readable characters from the text-rich PDF.
On 2/1/2024 2:25 PM, Timothy Snowden via Patentpractice wrote:
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><mailto: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><mailto:patentpractice at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com><mailto:DavidBoundyEsq at gmail.com>; Users of Patentcenter <patentcenter at oppedahl-lists.com><mailto:patentcenter at oppedahl-lists.com>; William Ahmed <ahmed.william at ymail.com><mailto: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<mailto: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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