[Patentpractice] Maybe the USPTO will give a satisfactory answer on "auxiliary PDF"

[Krista Jacobsen]

Great letter, as always, Carl.

A related issue is exactly which of the various documents in the DOCX
cluster*$%@ is the authoritative document. I have not been able to figure
this out, and the USPTO has put out inconsistent information.

Using Carl's terminology, there are potentially four documents in the mix
(as opposed to the single document in the PDF filing path, which leaves no
doubt as to the authoritative version of the written description, claims,
and abstract):

D1 = applicant-generated/uploaded DOCX file (discarded during filing
process)
P1 = applicant-generated/uploaded auxiliary PDF file (optional)
D2 = USPTO-generated DOCX file ("validated DOCX file")
P2 = USPTO-generated PDF file (presumably generated from D2, but has the
USPTO ever said this?)

Which one is the authoritative document?

It is obviously not D1, which the USPTO discards during the filing process.

Is D2 the authoritative document? The USPTO said it is in the Apr 28, 2022
FR Notice: "the USPTO considers the validated DOCX file(s) submitted by the
applicant to be the authoritative document and that applicants may rely on
the validated DOCX file(s) as the source or evidentiary copy of the
application to make any corrections to the documents in the application
file."

Setting aside the planet-sized elephant in the room, namely that what the
USPTO sees on its computers using its word processing software when it
opens this file might be different from what I see on my computer using my
word processing software when I open this file, the USPTO said in the Jun
2, 2021 FR Notice that D2 might disappear from the file wrapper after a
year: “the USPTO has a records retention schedule for documents it
receives, including new patent applications and correspondence filed in
patent applications. . . . In 2011, the USPTO established a one-year
retention policy for patent-related papers scanned into the IFW or SCORE. .
. . *After the expiration of the one-year period, the USPTO disposes of the
paper* unless the applicant, patent owner, or reexamination party timely
files a bona fide request to correct the electronic record of the paper in
IFW or SCORE. *DOCX submissions will be treated similarly*.”

I am not aware of any retraction of this policy, so I assume it still
applies.

If D2 is "disposed of" before the application has been examined, how can D2
possibly be the authoritative document, given that the application probably
hasn't been examined one year after filing? If D2 is gone from the record
by the time the examiner picks up the application, what does the examiner
look at? It seems to me that despite what the USPTO has said on the
subject, D2 cannot be the authoritative version, at least not after a year
from the filing date.

Thus, we are left with P1 and P2 as the only remaining options.

P1 SHOULD be, but sadly cannot be, the authoritative document because the
applicant is not required to submit it.

This leaves P2 as the only remaining possibility. But after saying that P2
is the authoritative version, the USPTO walked it back in the Apr 28, 2022
FR Notice and explicitly said P2 is not the authoritative version: "The
USPTO previously stated that for applications filed in DOCX, the
authoritative document would be the accompanying PDF that the USPTO systems
generate from the DOCX document. In response to public feedback, however,
the USPTO now considers the DOCX document filed by the applicant to be the
authoritative document."

What a mess.

Hello, USPTO:

(1) If D2 is the authoritative document, it MUST remain in the file wrapper
for the life of the patent plus the PTA period plus the entire
post-expiration enforcement period. Also, please acknowledge that what
USPTO personnel see when they open D2 is not necessarily what I see when I
open D2, and that is a key reason why essentially nobody in the
practitioner/applicant community thinks DOCX filing is a good idea.
(2) If P2 is the authoritative document, the USPTO needs to reverse itself
again and say so.
(3) The way out of this mess is to make P1 the authoritative document and
ask nicely for applicants to submit a DOCX file.

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com


On Thu, Feb 8, 2024 at 2:50 AM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> The urgent question outstanding for those who file utility patent
> applications at the USPTO is, are they stuck with no choice but to pay the
> $400 penalty to preserve the safe and trusted legacy PDF filing path, or is
> there any chance that the “DOCX with auxiliary PDF” path might present an
> acceptable level of professional liability risk so that the client could
> avoid the $400 penalty?  Maybe the USPTO will clarify this.
>
> See https://blog.oppedahl.com/maybe-uspto-will-clarify-the-docx-safeguard/
> .
>
>
> --
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>
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>
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