Month: February 2024

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How law firms and corporations are dealing with USPTO’s non-DOCX penalty

Some firms and corporations are trying to figure out what to do about the USPTO’s DOCX initiative (the $400 non-DOCX penalty) that came into effect on January 17, 2024.  Other firms and corporations have already decided what to do about the DOCX initiative.  In recent days I surveyed firms and corporations about their present approaches to the DOCX initiative.  How many law firms have written to their clients, telling them that the firm refuses to take the risks of filing in DOCX?  How many firms and corporations have decided not to file in DOCX format (meaning that they have decided to pay the non-DOCX penalty)?  How many firms and corporations have decided to file in the DOCX-plus-auxiliary-PDF path?  How many firms and corporations have decided to file in the DOCX-alone path?  Over 150 law firms and corporations responded to the survey.  Read on to see the survey findings.

Continue reading “How law firms and corporations are dealing with USPTO’s non-DOCX penalty”

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Please respond to this survey about your use of USPTO’s DOCX e-filing paths

(Update:  the survey responses have been received.  You can see the survey findings.)

Some firms and corporations are trying to figure out what to do about the USPTO’s DOCX initiative (the $400 non-DOCX penalty) that came into effect on January 17, 2024.  Other firms and corporations have already decided what to do about the DOCX initiative.  This survey hopes to collect responses from firms and corporations about their present approaches to the DOCX initiative.  How many firms and corporations have decided not to file in DOCX format (meaning that they have decided to pay the non-DOCX penalty)?  How many firms and corporations have decided to file in the DOCX-plus-auxiliary-PDF path?  How many firms and corporations have decided to file in the DOCX-alone path?

Please respond to this survey.

It is likely to be very helpful to the patent community to have lots of responses from lots of firms and corporations.  I hope that lots of members of the patent community will respond, and I thank you in advance for your participation.
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Pursuing rehearing and rehearing en banc in the “no more notice-and-comment needed” opinion

As I described in this blog article, I fear that a recent opinion from a three-judge panel of the Court of Appeals for the Federal Circuit will signal to the USPTO that going forward, it can duck the APA’s notice-and-comment requirements by arbitrarily deeming any rulemaking it does as merely “procedural”.

It seems to me that what needs to happen next is a rehearing, or a rehearing en banc, at the Federal Circuit, on this case (In re Chestek PLLC, February 13, 2024, slip opinion).

Two things are, I think, needed if this petition is to move forward and if it is to have a reasonable chance of success.

Pledging funds.  The applicant incurred substantial expense pursuing the appeal this far and, I believe, is only going to be able to pursue rehearing if there is support from the IP community.  Earlier today I set up a pledge system by which members of the IP community may pledge support.  As of right now there are nine pledges adding up to $6K.  I believe the applicant will only be able to proceed if at least $35K is pledged.

Committing to amici.  I think that for a reasonable chance of success, there will need to be cogent amicus briefs alerting the Federal Circuit to how much unchecked power this puts in the hands of the PTO.  This would hopefully include briefs from the relevant professional associations.  I am aware of two amicus commitments thus far from members of the IP community.

I invite readers to pledge contributions toward this petition effort.

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Has the USPTO just been given freedom from notice-and-comment requirements?

On February 13, 2024 a three-judge panel of the Court of Appeals for the Federal Circuit rendered an opinion that preserves the USPTO’s requirement that every trademark applicant reveal to the USPTO where the applicant sleeps at night.  If that had been the sole consequence, that would have been bad enough, in my view.  (I have made no secret of my view that the USPTO’s notice-and-comment activity for the “where you sleep at night?” requirement failed to give any notice at all, let alone enough notice to comply with the Administrative Procedure Act.)

The opinion, unfortunately, is likely to have consequences going far beyond merely preserving the requirement that trademark applicants reveal where they sleep at night.  The opinion is likely to embolden the USPTO, going forward, with the notion that almost nothing that the USPTO does in the future would need any ADA notice-and-comment activity.  Here is the part of the opinion that worries me:  Continue reading “Has the USPTO just been given freedom from notice-and-comment requirements?”

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Webinar: Five myths about filing US patent applications in DOCX

Attend this webinar to dispel five myths about the USPTO’s DOCX initiative.

On January 17, 2024 the USPTO commenced charging its $400 penalty in applications where the filer uses the tried-and-true legacy-PDF path for filing US utility patent applications.  The desire to avoid having to pay this penalty has prompted applicants and practitioners to explore the other two available filing paths, namely DOCX-plus-aux-PDF and DOCX-without-aux-PDF, each of which presents substantial risks when compared with the legacy PDF path.

In an attempt to convince applicants and practitioners to take the risky paths, the USPTO has by now presented a staggering over one hundred fifty webinars (blog article).  In the webinars, the USPTO has been and continues to be, to put it gently, disingenuous about the risks of the DOCX filing paths.  Continue reading “Webinar: Five myths about filing US patent applications in DOCX”

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Tech support failure at the Assignment Branch

(Update:  the USPTO did fix the defect, but it took three months, and the USPTO did not do me the courtesy of letting me know, see blog article.)

This past Monday, February 5, 2024, was the big day that the USPTO launched its Assignment Center.

The USPTO failed to do any customer-side alpha or beta testing prior to launch day, despite having been invited to do so on November 12, 2023 (blog article).

When the USPTO belatedly revealed some of its training materials on January 29, 2024 (blog article), I predicted (see it here) that it would turn out that USPTO’s software developers had failed to handle correctly any PCT application that had been filed in a Receiving Office other than RO/US.

Sure enough, when the USPTO launched its Assignment Center on February 5, my prediction was fulfilled.  It was impossible to record an assignment against any PCT application that had been filed in a Receiving Office other than RO/US.

The Assignment Branch lists two ways to get tech support for bugs in Ass. Center.  A first way to get tech support is to send an email to assignmentcenter@uspto.gov .  I did that on Monday, February 5.  Four days have passed and nobody at the USPTO has answered that email.  Nor, during those four days, did anybody at the USPTO fix the bug reported in that email.

A second way to get tech support is to place a telephone call to the Assignment Branch at +1-571-272-3350.  I did that bright and early on Tuesday, February 6 (blog article).  I waited on hold for some twenty minutes, eventually reaching a human being who claimed to be wholly unable to provide tech support, but who offered to “open a ticket”.  So I received ticket number 1-849780117.  Three days have passed and nobody at the USPTO has gotten back to me on that ticket.  Nor, during those three days, did anybody at the USPTO fix the bug reported in that ticket.

Bright and early on Tuesday, February 6, I left a voice mail message for the manager of the Assignment Branch, a Joyce R. Johnson.  I left a detailed voicemail message.  Three days have passed and she has not returned my call.  Nor, during those three days, did anybody at the USPTO fix the bug reported in that voicemail message to the manager.

 

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Maybe USPTO will clarify the “DOCX safeguard”

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.  Continue reading “Maybe USPTO will clarify the “DOCX safeguard””

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Three days left to get in your numbers for the 2023 Toteboards

Three days from now will be the end of your opportunity to get your numbers in for the 2023 Toteboards (blog article).

So far we have the following results:

    • For the Trademark toteboard, we have 27 responses accounting for 6321 trademark registrations.
    • For the US plant patent toteboard, we have 5 responses accounting for 137 US plant patents.
    • For the US design patent toteboard, we have 20 responses accounting for 2111 US design patents.
    • For the US utility patent toteboard, we have 22 responses accounting for 11531 US utility patents.

If you have not already gotten your numbers in, now is the time to do it (blog article).