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

Thu Feb 8 16:43:12 EST 2024

Krista Jacobsen wrote:

> [...] 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."

> [...] the USPTO said in the Jun 2, 2021 FR
> Notice that D2 might disappear from the file
> wrapper after a year: [...]

> 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?

Reading the 2021/06/02 FR Notice and the 2022/04/28 FR Notice in combination, I draw slightly different conclusions.

I don't think it is unclear which document is the authoritative document, and I don't think the authoritative document is subject to early disposal.  Even without those ambiguities, it remains that the PTO has not explained how an applicant may demonstrate a discrepancy between the DOCX and anything else that would entitle them to a correction, and thus, filing in DOCX presents grave practitioner malpractice risks.

There was a change in terminology between the 2021 and 2022 notice.

As I read the 2022 notice, if applicant files in DOCX, the authoritative document is presumptively "the validated DOCX"--the PTO-generated DOCX document we are coerced to agree would be authoritative when we click the "Submit" button--that many of us have been calling D2.  For those who file in DOCX without an applicant-generated PDF, then D2 *ALSO* serves as "the source or evidentiary copy of the application to make any corrections to the documents in the application file."

What are the "documents in the application file" that one might seek to correct using D2 as "the source or evidentiary copy" of the application?  Who knows what-all that encompasses, but, according to the 2022 notice, it appears at least to include either the USPTO-generated PDF file P2, or an internal DOCX document ("D2-prime" upon correction) from which fixed versions of P2 ("P2-prime") are generated:

Thus, if a practitioner somehow notices a difference between D2 and P2 within one year of filing, or otherwise gets wind that the PTO's interpretation of D2 is inconsistent with the "real" D2, a petitioner supposedly can rely on D2 to ask that the PTO's copy of *SOMETHING* be corrected.

However, it is unclear how one can ever prove that there is a "discrepancy" between D2 and P2.  A cube-root symbol may look fine when viewed D2 a practitioner's computer, but might show up as a square-root symbol in P2 AND ALSO appear as a square-root symbol in D2 as viewed on a PTO computer at EBC or the Office of Petitions.

It is also unclear how a practitioner would get something corrected if, due to a change in the software on the PTO's computers, D2 is rendered differently on those computers several years after filing, even though it looked perfect on everyone's computer, and was rendered perfectly in P2, on filing day.  D2, not P2, is the authoritative document, and the PTO has provided no path by which the filing-day rendering shown in P2 can be relied upon for correction.

The PTO's failure to address these concerns in its rules and Federal Register notices, and the PTO's failure to publish a comprehensive Legal Framework for Patent Center and DOCX filing, make PDF the only safe filing path.

> 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.

As for what is "disposed of" and when, I don't read either the 2021 or 2022 notices as declaring that D2 will be disposed of earlier than the rest of the application file.

Also, I haven't found any non-superseded notice that states that D2 cannot be the authoritative version.  I think what the PTO has said is that D2 will be available as "the source or evidentiary copy of the application to make any corrections to the documents in the application file" for only one year.  Even after the first year has elapsed, D2 remains the authoritative document for various other purposes.

If no petition for correction has been granted, why wouldn't the Examiner have P2 from the IFW?  And why wouldn't the Examiner also have either D2 or whatever PTO-internal D2 derivative the PTO distributes to examiners for examination?  (See, for example, the 2022 notice, which mentions

| the specification, claims, and abstract that
| are to be used during examination and publishing,

in contradistinction to the Aux PDF.  See also the 2020/08/03 notice, which states,

| XML generated from DOCX files complies with the
| international World Intellectual Property Office
| (WIPO) Standard ST.96 from intake through
| display and use in examination tools.