[Patentpractice] DOCX penalty fee question

[Richard Schafer]

I’m pretty sure that the PTO’s position is that nothing said in one of the training videos can be relied upon. Such as last year when the trainer in one of the PTO’s “how to use DOCX” sessions said there would be a delay in implementing the surcharge, but PTO bigwigs like Seidel refused to confirm that. I think their view is nothing said in one of those training sessions is an official statement of the PTO.

Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
M: 832.283.6564 | richard at schafer-ip.com<mailto:richard at schafer-ip.com>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Judith S via Patentpractice
Sent: Wednesday, February 28, 2024 5:05 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Judith S <judith.a.s at gmail.com>
Subject: Re: [Patentpractice] DOCX penalty fee question

I missed that!  Whoever got penalized, want to petition to reverse that penalty, based on this video?

Judith

On Wed, Feb 28, 2024 at 2:50 PM Randy A. Noranbrock via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> 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
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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<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Dan Feigelson via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Dan Feigelson <djf at iliplaw.com<mailto:djf at iliplaw.com>>
Subject: Re: [Patentpractice] DOCX penalty fee question


[EXTERNAL 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<mailto: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. ☹

Thanks in advance,
Judi
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