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

[Carl Oppedahl]

What she said.

On 2/8/2024 10:57 AM, Krista Jacobsen via Patentpractice wrote:
> 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 <http://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/
>     .
>
>
>     -- 
>     Patentpractice mailing list
>     Patentpractice at oppedahl-lists.com
>     http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
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