USPTO’s $400 non-DOCX penalty and car rental collision damage waivers

Patent applicants and practitioners continue to resent the USPTO’s $400 penalty that it plans to impose upon any patent applicant that has the temerity to try to establish a PDF file as the “controlling” document for the patent application being filed.  The penalty was going to start a few days ago, on January 1, 2023.  The USPTO blinked and has postponed the penalty to a starting date of April 3, 2023.  As of right now, that is when this penalty will begin.

The other day I realized that there is a pretty strong analogy to make here between this $400 penalty and another bane of daily life — car rental companies gouging renters with the “collision damage waiver”.  Continue reading “USPTO’s $400 non-DOCX penalty and car rental collision damage waivers”

USPTO blinked on the non-DOCX surcharge

(Correction — I am told that both AIPLA and IPO also contacted the USPTO privately in recent weeks about this problem.)

It looks like maybe the USPTO blinked on the non-DOCX surcharge problem, at least a little.  What forced the USPTO to blink was a letter from 117 patent practitioners pushing back on a December 20, 2022 Federal Register notice.  The notice maintained and doubled down on January 1, 2023 as a date that all US patent filers would face a harsh choice — incur substantial risks of losses of patent rights due to the DOCX program, or pay $400 to be able to file a patent application in a way that eliminated those substantial risks.  The only visible pushbacks on this December 20, 2022 FR notice were:

      • the above-mentioned letter signed by 117 practitioners, and
      • ceaseless personal efforts by Bradley Forrest, a partner at the Schwegman firm.

In this blog article I briefly describe the state of play on the DOCX program as it now appears.
Continue reading “USPTO blinked on the non-DOCX surcharge”

One hundred six practitioners write to the Acting Commissioner for Patents

Today a letter got sent to the Acting Commissioner for Patents, Andrew Faile.  It was signed by one hundred six patent practitioners.   You can see the letter here.  USPS delivered it as you can see here.  A courtesy copy of the letter was send by email to Acting Commissioner Faile and to Director Kathi Vidal.

The purpose of the letter is to help Acting Commissioner Faile appreciate the two major failures in the USPTO’s Federal Register notice dated April 28, 2022 entitled Filing Patent Applications in DOCX Format (87 FR 25226).

 

What is in the “yearlong study” that supposedly says DOCX is the right path?

The USPTO published a Federal Register notice entitled Setting and Adjusting Patent Fees during Fiscal Year 2020, dated August 2, 2020 (85 FR 46932).   This is the FR notice that communicates the USPTO’s conclusion that if we are going to force applicants to change from what they were doing in the past, and in particular if we are going to force them henceforth to hand in some particular format for US patent applications, then we at the USPTO know what’s best, and what’s best is not some particular flavor of PDF.  What’s best (according to the USPTO) is Microsoft Word DOCX format. 

The Federal Register notice said, in four places:

The USPTO conducted a yearlong study of the feasibility of processing text in PDF documents. The results showed that searchable text data is available in some PDFs, but the order and accuracy of the content could not be preserved. 

As soon as we saw this, many members of the practitioner community wondered what was in the “yearlong study”?    What was there in this “yearlong study” that led to a conclusion that Microsoft Word DOCX format was supposedly the better format to try to force applicants and practitioners to file, rather than some particular PDF format?

One member of the practitioner community filed a FOIA request at the USPTO, asking for a copy of the “yearlong study”.  This was ten months ago.  The people at the USPTO whose job it is to fight FOIA requests comply with the FOIA law have fought tooth and nail to keep from having to hand over the “yearlong study” and have not handed it over even now after ten months.  And indeed almost everything about the USPTO’s way of forcing the Microsoft DOCX format upon applicants and practitioners has led to an adversarial relationship between the USPTO and a substantial portion of the practitioner community.

So it was very much a breath of fresh air when, earlier today, at my request, Acting Commissioner Andrew Faile sent me a copy of the “yearlong study”.  I think Acting Commissioner Faile is trying to be more open and candid with the practitioner community now in recent months.

I have done a quick read of the yearlong study and you can read my initial conclusions here.

Please consider signing this letter about DOCX

(Update:  The letter has been sent.  See here.)

Hello readers.    If one of the things that you do for a living is filing patent applications at the USPTO, then I urge you to take a look at two documents:

Please consider signing the letter.

Thank you.

Carl

Working out the evils in the variants of the USPTO’s DOCX adhesion contract

(Update:  it is time for you, dear reader to consider signing another letter.  See blog posting.)

Earlier today I posted the dismaying realization that Patentcenter lies about the DOCX file that you uploaded (blog article).

This has a very disappointing interplay with the adhesion contract that the USPTO people have had in mind for the people who file DOCX patent applications at the USPTO.  We are now on our third variant of the adhesion contract, and arguably this most recent variant is far worse than either of the previous two variants.  Continue reading “Working out the evils in the variants of the USPTO’s DOCX adhesion contract”

Beware USPTO’s DOCX system

(Update:  it is time for you, dear reader, to consider signing another letter.  See blog posting.)

I have published several blog articles (see them here) warning practitioners about the problems with the USPTO’s ill-conceived plans for requiring patent applicants to submit their US patent applications in Microsoft Word format.

Every patent practitioner should attend a free-of-charge webinar that will be presented tomorrow by the Schwegman firm on this topic.

A look at how to file using DOCX documents in the USPTO Patent Center and how what you end up filing may not be what you intended to file. Or, just pay $400 more and submit a PDF of the application that the inventor approved.

To learn more or to register, click here.