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.

Using DOCX leads to delay in visibility in IFW

USPTO has made it plain that it really wants filers to file their US patent applications in Microsoft Word format, not as PDFs.  (USPTO expresses this wish by saying it wants patent applications to be filed in “DOCX” format, but of course there is no single “DOCX” format, there are many variants of DOCX and the only variant that USPTO handles correctly is the variant that Microsoft Word generates.)  There are many drawbacks to the way that the USPTO has implemented its handling of patent applications filed in a DOCX format, and one of them is that this can result in a long delay in the visibility of the newly filed patent application in IFW.  It is yet another reason to simply file in PDF format.  Continue reading “Using DOCX leads to delay in visibility in IFW”

Still concerned about DOCX?

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

A colleague today noted that by now more than a month has passed since the last time I griped about USPTO’s DOCX activities in this blog.  He wondered if perhaps my silence was an indication that I feel the USPTO people have somehow addressed my concerns about the DOCX situation.

Just so that there is no risk of any misunderstanding about this, no, it is not the case that anything that anyone at the USPTO has done has alleviated in any way my concerns about USPTO’s DOCX plans. Continue reading “Still concerned about DOCX?”

How the USPTO should do DOCX (pre-conversion format)

click to enlarge

Today I am working on getting ready to file a PCT patent application and I am filing it in DOCX and it reminds me how wrong-headed USPTO’s approach is.  Folks, if you have not filed DOCX at the RO/IB, I invite you to try it so that you can see that there is a correct way to do DOCX.  It’s just that the USPTO does not do it that way. Continue reading “How the USPTO should do DOCX (pre-conversion format)”

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.