[Patentpractice] DOCX penalty fee question

[Carl Oppedahl]

Thank you.  Yes, at least as recently as last December, the USPTO DOCX 
koolaid presenters said exactly this.  I have a recording of one of the 
USPTO DOCX koolaid presenters saying exactly this.  You could hand in a 
preliminary amendment on the same day as the filing of the DOCX 
application, and it would not trigger the $400 penalty.

But now the reports that we are all seeing from some of our colleagues 
are that the Application Branch is imposing the $400 penalty for such a 
filing path.

Back when I was hearing this from the USPTO koolaid presenters, I 
worried that the USPTO would flip-flop on this.  As of last December, 
the USPTO people had apparently not figured out that this path could 
include a preliminary amendment along the lines of "cancel the DOCX 
content of the application we filed an hour ago, and replace it with the 
following PDF file".  Which would then deprive the USPTO of the ability 
to punish those who want to use a trusted PDF as their patent application.

Anyway yes it looks like now in February, the USPTO people have figured 
out that they absolutely must impose the $400 penalty for this filing 
path so as to punish anyone who wants to have a trusted PDF be the 
authoritative document by means of this path.

On 2/28/2024 3:50 PM, Randy A. Noranbrock via Patentpractice wrote:
>
> Although, if you jump to the 40:28 mark of this helpful PTO video, you 
> can hear the PTO answer to this very question: 
> https://www.uspto.gov/learning-and-resources/uspto-videos/how-file-your-patent-application-documents-docx
>
> “Question 4.
>
> Will there be a surcharge for preliminary amendments submitted in PDF 
> format?
>
> No. Preliminary amendments can be filed in PDF format and can be 
> included with the initial filing.”
>
> -R
>
> --
>
> Randy A. Noranbrock - randy at ipfirm.com <mailto:randy at ipfirm.com> — 
> Partner @ Hauptman Ham, LLP
>
> http://www.ipfirm.com <http://www.ipfirm.com/> - (703) 535-7070 
> (direct) - (703) 518-5499 (fax)
>
> Randy A. Noranbrock is admitted in VA and registered to practice 
> before the US Patent & Trademark Office
>
> *From: *Patentpractice <patentpractice-bounces at oppedahl-lists.com> on 
> behalf of Dan Feigelson via Patentpractice 
> <patentpractice at oppedahl-lists.com>
> *Reply-To: *"For patent practitioners. This is not for laypersons to 
> seek legal advice." <patentpractice at oppedahl-lists.com>
> *Date: *Wednesday, February 28, 2024 at 5:33 PM
> *To: *"For patent practitioners. This is not for laypersons to seek 
> legal advice." <patentpractice at oppedahl-lists.com>
> *Cc: *Dan Feigelson <djf at iliplaw.com>
> *Subject: *Re: [Patentpractice] DOCX penalty fee question
>
> *[EXTERNAL SENDER]*
>
> Image removed by sender.
>
> I think the issue with the preliminary amendment was that is was filed 
> on the same day as the application, and therefore was considered part 
> of the original filing. As far as I know, amendments filed after the 
> day of filing do not trigger the penalty.
>
> Dan
>
> On Thu, Feb 29, 2024 at 12:17 AM Goldberg, Judi via Patentpractice 
> <patentpractice at oppedahl-lists.com> wrote:
>
>     Does the DOCX requirement/$400 penalty apply to _any_ spec
>     amendments, such as filing a replacement spec?  I saw the email
>     discussions here that the penalty fee was assessed for a
>     preliminary amendment, so I’m wondering if we will also get hit
>     with the penalty if we have to file a substitute spec?  Does it
>     make a difference if the amendments are in a national phase
>     application rather than a utility application, like it is for the
>     initial filing (Or will they also assess the penalty fee if we
>     file a preliminary amendment? Hmmmm).
>
>     PS – I took several of the USPTO’s DOCX “training” sessions, and
>     they never mentioned having to pay the penalty for anything other
>     than the originally filed spec.  Why am I not surprised. L
>
>     Thanks in advance,
>
>     Judi
>
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