I am delighted to be able to report that the thirty-one practitioners received a response from the Commissioner for Patents. This was the letter with four “asks” about the DAS (Digital Access System) for electronic retrieval of electronic certified copies of priority documents. Continue reading “The thirty-one practitioners receive a response from the Commissioner for Patents”
An open letter to the Commissioner for Patents
(Update: it is time for you, dear reader to consider signing another letter. See blog posting.)
What should the the USPTO do so that patent applicants and practitioners will be less reluctant to try filing with DOCX files?
The problem of course is that the e-filing regime which USPTO presently imposes is that when the filer uploads a DOCX file, the USPTO e-filing system (EFS-Web or Patentcenter) then renders the DOCX file into a PDF using USPTO’s own proprietary rendering engine. The e-filing system then displays the PDF and presents an adhesion contract for a click-wrap signature by the filer. The filer is required to irrevocably agree that whatever appears in the PDF as rendered by the USPTO will control for all later purposes.
This e-filing regime is often played out at a time of day that is only a few hours or even just a few minutes prior to midnight on the day that the filer absolutely must get the patent application filed. Under such circumstances it is wholly unacceptable for USPTO to require that the filer proofread the entire PDF from the top to the bottom to see whether the USPTO’s proprietary rendering engine might have rendered something incorrectly.
This e-filing regime presents an unacceptable malpractice risk for the patent practitioner.
This e-filing regime puts the patent practitioner in an untenable position regarding inventor workflow. The inventor is asked to review a draft patent application and to sign an inventor’s oath or declaration based upon that draft patent application. The document reviewed by the inventor might be a word processor file in a format that is commonly understood by the inventor and the practitioner. Alternatively the document reviewed by the inventor might be a PDF file that was rendered by the practitioner. But later, at e-filing time, the practitioner uploads a DOCX file and the USPTO uses its proprietary rendering engine to render the DOCX file into a PDF file. And it is this PDF file which is the subject of the click-wrap adhesion contract. It is this PDF file, which almost certainly is non-identical to the PDF or word processor rendering that was reviewed by the inventor, that USPTO intends will control.
What is untenable is that the practitioner is in the position of filing at the USPTO an inventor declaration that refers to a document or rendering that is known to be non-identical to the patent application actually being filed with that inventor declaration.
Everybody agrees that of course there are goals common to the applicant and to the patent office that are advanced whenever characters are provided rather than mere images.
For many years now, the patent community has suggested several ways to the USPTO by which the USPTO could greatly reduce or even eliminate these profound problems and risks from the existing DOCX e-filing regime. What is regrettable is that USPTO has ignored them all. For example many years ago the patent community pointed out to the USPTO the solution that had been arrived at in the PCT community, namely the filing of a “document in pre-conversion format”. You can read about this in Section 706 of the Administrative Instructions. This approach of course has the profound drawback of being “not invented here” from USPTO’s point of view.
The patent community has also pointed out that most patent applicants have for years been e-filing patent applications as PDF files that do contain characters. USPTO regrettably flattens such PDFs into pure-image TIF files when loading those PDFs into its IFW system. USPTO actively discards those characters. USPTO could get 80% of the way toward its character-capture goal simply by not discarding those characters.
As I say, these two approaches, the “pre-conversion format” approach and the “don’t discard the characters in the PDF” approach, have fallen on deaf ears at the USPTO. So today’s blog article offers yet another suggestion how USPTO could largely eliminate the risks and problems with USPTO’s DOCX e-filing regime.
The chief concern is the mistaken impression that there is some single unambiguous way that everyone in the world renders DOCX into human-viewable images, for example as PDF files. This mistaken impression is communicated by the oxymoron phrase “DOCX standard”. There is no “DOCX standard”. (The USPTO disingenuously and falsely refers to a “DOCX standard” but there is no such thing.)
This lack of any single unambiguous way that everyone in the world renders DOCX into human-viewable images only becomes a problem if a government agency selects some particular proprietary rendering engine and sets up a filing regime in which the rendering takes place at e-filing time and in which the user is required to agree at e-filing time to an adhesion contract that the images rendered by that proprietary engine control for later purposes. The combination of a rendering shortly before midnight on filing day, with an adhesion contract that the rendered images control, is absolutely unacceptable to applicants or to practitioners.
The single best way to eliminate this problem is for USPTO to publish the source code for its rendering engine. It’s as simple as that. Locate that body of source code, and with one or two mouse clicks, publish it on USPTO’s web site. That’s it. Then the problems all go away.
If for some reason the USPTO feels it cannot or will not publish that particular source code, then USPTO should scrap that rendering engine and adopt an open-source rendering engine. Such an open-source rendering engine is available for example in the Libre Office software development platform.
If the rendering engine code is public, then applicants can see for themselves exactly how particular tags and markup will be rendered and in particular can see this well in advance of filing day.
Ten years later in litigation, there would not be any opportunity for dueling experts to pretend to hold different views as to how a particular tag or markup would or would not have been rendered on filing day, because the open-source rendering engine would have been documented and date-stamped in the relevant software development platform.
So there’s the answer, presented in this open letter to the Commissioner for Patents. Publish the source code for your DOCX-to-PDF rendering engine. Do that, and I can promise you that the patent filing community will join you in moving this DOCX e-filing initiative forward.
Why this change to USPTO’s credit card limit?
Sometimes the USPTO does things and I cannot immediately figure out the reason why. Here is one of them, brought to my attention by alert reader Dana M. Stangel. Today I logged in to pay an Issue Fee, and this big brightly colored banner appeared at the top of the USPTO web page. It says:
Temporary Increase to Credit Card Daily Limit
The daily limit per credit card account has increased from $24,999.99 to $99,999.99. The temporary increase will remain effective through June, 1, 2020.
Well in one sense of course I know exactly why the USPTO did this. It must be the novel coronavirus. Any time in Spring of 2020 that any government agency or large organization does any really big thing that is temporary and makes no apparent sense, the explanation is coronavirus. I get that.
But what exactly is going on here? How did the USPTO pick “times four” as the amount of the increase? How did USPTO pick June 1? Why was there ever a limit in the first place?
Upon some reflection I realized I know the answer. It has to do with credit card commissions, which government agencies generally intensely dislike having to pay.
Normally if you make an arrangement to be able to take credit cards as a mode of payment, the contract that you will have to sign will contain language forbidding you from charging the commission through to the customer. Saying this differently, the contract will contain language that requires you to absorb the commission. Our firm uses Stripe to process most of our credit card payments, and the commission that we incur is 2.9% plus 30¢ per transaction. And the standard Stripe contract requires us to absorb that commission.
Years ago many states passed laws giving special bargaining power to government agencies. They were able to force the credit card companies to modify the standard contract so that a government agency would be able to charge the commission back to the customer. You run into this every time you pay for a license plate for your car using a credit card, and you get dinged a “convenience fee” for the transaction.
When I was first in practice, the USPTO did not accept credit cards. The usual payment mechanism was the “deposit account”. You would send a check for five or six figures of money every few weeks to some address in Chicago and the USPTO would credit the money to your deposit account, and you would draw upon the deposit account when paying fees in patent and trademark cases. This worked okay for high-volume filers but was of course completely unworkable for pro se filers.
After many years of foot-dragging, the USPTO finally ceded to the inevitable and started accepting credit cards as a mode of payment. I imagine there was debate within the USPTO as to whether or not to charge convenience fees. The problem of course is that if on some particular day the USPTO were to start accepting credit cards without charging convenience fees, it would be completely predictable that some of the high-volume filers that used to use deposit accounts would switch to credit cards. This would instantly cut the USPTO’s revenues by a very predictable amount.
In recent times a typical year of fee collections might add up to around $3 billion. There are plenty of dinosaur corporations and law firms that continue to use deposit accounts as their chief way of paying USPTO fees. But many filers choose to collect the frequent flyer benefits or purchasing points or rebates that can be gotten by using particular credit cards to pay USPTO fees. I imagine that at least half of the fees paid to the USPTO are paid by credit card, or at least $1.5 billion annually. I assume the USPTO negotiates a better commission than the standard Stripe commission, but still it would be at least 2%. So the USPTO loses perhaps $30 million annually in credit card commissions.
This discussion helps to explain why there was this $24,999.99 limit in the first place. The point of the limit was to try to divert some fee payments away from credit cards (where the USPTO incurs commissions) and over to other payment modes such as deposit accounts and ACH transfers (where the USPTO does not incur such commissions).
I will tell you that at our firm, at least, the $24,999.99 has never actually diverted any of our USPTO spending away from credit cards! Whenever we smack up against that limit on a particular credit card at the USPTO, we simply move on and use another credit card. We have multiple credit cards set up in USPTO’s Financial Manager system for this purpose.
But anyway, yes, it is clear that USPTO’s announcement that this limit will temporarily be increased from $24,999.99 to $99,999.99 is basically the USPTO’s way of saying “due to the novel coronavirus we are willing to absorb more commissions than usual”.
Get Patents Fast
Recently I posted that I plan to offer quite a few webinars in the next few weeks. I have just now picked the date and time for Get Patents Fast. This is a new and improved version of the previous webinar which was on February 5, 2019. Just as in the previous webinar it discusses:
- Patent Prosecution Highway (my favorite)
- Track I (prioritized examination)
- Accelerated Examination (not my favorite)
- Petition to make special based upon age of an inventor
- Petition to make special based upon poor health of an inventor
- Full First Action Interview Pilot Program
The discussions of those six initiatives are updated to the present day. And new to this version are two more ways to get patents fast:
7. Collaborative Search Pilot (CSP)
8. Expedited Examination (Design Applications Only)
This webinar will take place Thursday, April 16, 2020 from 10:00 AM to 11:45 AM Mountain Time. To find out more, or to register, click here.
Letter to Commissioner for Patents – one “ask” received so far
Hello dear readers. It will be recalled that on February 22, 2020, thirty-one patent practitioners wrote a letter to Commissioner for Patents Drew Hirshfeld. The letter had four “asks” relating to DAS. I am delighted to report that we have already gotten what we wanted of the four “asks”. Continue reading “Letter to Commissioner for Patents – one “ask” received so far”
DAS and Designs – slides and recording
Hello faithful readers. USPTO’s Design Day 2020 was set for April 23, 2020. I was going to present at Design Day on the topic of DAS and Designs:
Practical tips on using WIPO’s Digital Access Service (DAS), which is growing in popularity for design practitioners.
Then it got canceled — you know why it got canceled. So I made a plan to present my material instead as a webinar. The webinar took place on March 31, 2020. There was a lot of very helpful audience participation and I think the webinar went well as a consequence.
You can download the slides here and you can view a recording of the webinar here.
Please post comments below.
Learning to be paperless with PCT (Covid-19 issues) – slides and recording
Hello faithful readers. On March 30 WIPO announced that it was ceasing the mailing of paper relating to PCT applications due to the work-from-home challenges from Covid-19. On that day I announced that I would be presenting a webinar on how to become paperless with PCT. The webinar took place. There was a lot of very helpful audience participation and I think the webinar went well as a consequence.
You can download the slides here and you can view a recording of the webinar here.
Please post comments below.
Upcoming webinars
Here are some webinars that I plan to offer in the next few weeks. If you want to be sure to hear about it when I schedule a particular webinar, please be sure to subscribe to this blog. To hear about upcoming PCT-related webinars, be sure to subscribe as well to the PCT listserv.
- Get Patents Fast
- Don’t end up like the owner of that CRISPR patent
- Docketing PCT
- Picking a PCT Searching Authority
- Picking a PCT Receiving Office
- Making smart use of PCT Declarations
- National phase or bypass continuation?
- Sequence listings
Maybe there are other topics you would also like to see. If so, post a comment below or drop me an email.
Who was a beta-tester of ePave?
A member of the EFS-Web listserv asks if he can hear from people who used USPTO’s XML patent application authoring and e-filing system back in 2002. Yes our firm was among the beta-testers of that system. This prompts the following blog article. Continue reading “Who was a beta-tester of ePave?”
Reflecting on the “eighty-four practitioners and applicants” letter
I have had a moment to reflect upon the letter that just got sent from Eighty-four Practitioners and Applicants to the Executive Director of the European Union Intellectual Property Office. (You can read about it here.)
I am very proud and honored to be among the eighty-four signers of this letter. I am personally acquainted with some of the signers.
One of the signers whose name I recognize is an individual who filed one design application in EUIPO and then filed in the US and had to go to a lot of trouble to obtain a physical certified copy to perfect the priority claim in the US. That individual knows as well as anyone does, what a benefit will flow to the design community if and when EUIPO joins DAS.
Other signers whose names I recognize include some of the leading lights in the world of very experienced design protection practitioners, some of whom were serving design clients long before I ever was.
Thank you to those who signed. Let’s hope that the EUIPO chooses to join DAS and chooses to do it soon.
Carl