[Patentpractice] [Patentcenter] two questions about the dreaded .DOCX situation
Rick Neifeld
rneifeld at neifeld.com
Mon Feb 5 12:55:10 EST 2024
First, Margaret would be able to prove to the satisfaction of the PTO or
a court that the specification she filed in pdf format (that is not a
DOCX filing) was the legally operative copy. See “Review of Legal
Framework for Electronic Filing System-Web (EFS-Web), 74 FR 55200-211
(2009) <https://www.neifeld.com/pubs/2009_reviewefsweb.pdf>” Rick
Neifeld, October 27, 2009. ("Accordingly, the official record for the
patent application and reexamination ... comprises ... the Electronic
Acknowledgment Receipt ....") The EAR includes the digest section which
includes the SHA-512 value for each file Margaret uploaded and filed.
No one can argue with the correlation of a SHA-512 produces hash value
for a file. Identify of hash value means to an almost mathematical
certainty identity of input files.
Second, merely having the right to correct, unfortunately, does not mean
instantaneous correction. More specifically, for causes of action
arising before an error preventing a patent from is valid and infringed,
is corrected by issuance of a COC, there is no right to relief. I
recall cases where the error discovered after suit was filed resulted in
the judge excluding the deficient patent from the law suit, which de
facto made the patent unenforceable in that dispute. However that is
not the case for a judicial (district court) de jure error correction,
which would be effective during litigation. See Novo Indus., L.P. v.
Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003).
On those facts, I would prefer defending (against an attack and the
propriety of the specification) a patent the PTO misprinted when I had
filed a pdf (non DOCX) specification, rather than a DOCX (with an aux
pdf) the PTO misprinted. Why? Because pdf filing forecloses arguments by
the defendant that the patentee was partially at fault for failing to
properly review the specification and fix errors. When you pdf file, you
pdf file the document you upload. If your uploaded document has no
errors, there is no basis to allege failure to review the uploaded file
was related to some PTO printing error. In contrast, the screwy DOCX
filing warns you to carefully review their garbled version of your
uploaded DOCX file as garbled by the PTO, and to be responsible for any
errors in their garbled version, and only allows you to file the garbled
version. So the blame is on you, the filer. Putting myself in front of
a district court judge who is deciding whether to judicially correct a
defective patent, the equities favor the patent resulting from the pdf
filed specification. Therefore, whatever discretion the judge has under
the standards for judicial correct (/See/, Neifeld, "Law Regarding
Patents", subsection "Judicial Correction of a claim, by interpretation,
of Patents,") would favor judicial correction.
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: richardneifeld at gmail.com
Web: https://neifeld.com/
This is *NOT *a confidential communication of counsel. If you are not
the intended recipient, delete this email and notify the sender that you
did so.
On 2/1/2024 5:12 PM, Roger Browdy via Patentpractice wrote:
>
> That’s outrageous. I would definitely petition that. There is
> absolutely no justification for calling that applicant error. It
> should be made a test case and taken all the way to the Supreme Court
> (I know, that’s easy for me to say).
>
> Roger
>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On
> Behalf Of *Margaret Polson via Patentcenter
> *Sent:* Thursday, February 1, 2024 4:14 PM
> *To:* For bug reports, feature requests, and tips and tricks about
> Patent Center. <patentcenter at oppedahl-lists.com>; For patent
> practitioners. This is not for laypersons to seek legal advice.
> <patentpractice at oppedahl-lists.com>
> *Cc:* Margaret Polson <MPolson at polsoniplaw.com>
> *Subject:* Re: [Patentcenter] [Patentpractice] two questions about the
> dreaded .DOCX situation
>
> 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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>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
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>
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