Category: non-DOCX penalty

On June 6, 2023, the USPTO published a Federal Register notice (88 FR 37039) requesting comments on USPTO’s estimates of the burden that the DOCX application filing initative will impose upon applicants.  That FR Notice had set a closing date of August 7, 2023 for filing of comments.

As it turns out, nine comments got filed.  You can see them here:

• • Comment by Richard Neifeld (July 27, 2023)
  • Comment by Kilpatrick Townsend & Stockton LLP (July 30, 2023)
  • Comment by Carl Oppedahl (August 5, 2023)
  • Comment by Laurence Hyman (August 5, 2023)
  • Comment by American Intellectual Property Law Association (August 6, 2023)
  • Comment by James Lake (August 6, 2023)
  • Comment by 152 Patent Practitioners, PTAAARMIGAN (August 6, 2023)
  • Comment by Benjamin Keim (August 6, 2023)
  • Comment by One Hundred Seven Patent Practitioners (August 7, 2023)

All of the comments are extremely negative towards USPTO’s DOCX initiative.  Here is what listserv member Richard Schafer had to say about the AIPLA comments:

I haven’t had time to read the entire letter, but based on the executive summary section, I don’t remember seeing a public comment from the AIPLA or any other professional organization that was this strongly negative about a PTO proposal. I can only imagine the frustration certain portions of the PTO must be experiencing to have the largest professional organization in this field take such a strong stance against the entire DOCX proposal.

I’m sure someone in the PTO was lobbying AIPLA to try to prevent this kind of statement. Thankfully, that lobbying has clearly failed.

Here is my reaction to the AIPLA comments.  Highlights of the AIPLA comment letter include:

• • “The financial burden on the public as presented in the Notice would therefore be 79 times greater than that saved by the Office … .”  (letter at p. 5)
  • “In order to minimize the burden, AIPLA strongly urges that applicants be able to file a single document (such as a text-based PDF) that is legally sufficient to correct any errors that may be introduced by IT systems.”  (letter at p. 7)
  • “DOCX filing is fraught with legal and technical challenges that have not been addressed and for which solutions are unlikely.”  (letter at p. 7)

• Historically what one has sometimes observed in comment letters from some professional associations is that a letter might use relatively soft language.  When such use of relatively soft language is observed, it is perhaps understandable given that any professional association has no choice but to try to take into account a range of views among its membership and among the participants in the comment-drafting process.  From my own perspective as a reader of many comment letters from many professional associations, I see this particular comment letter from AIPLA to be about as strongly worded as any I have ever seen from any professional association.  USPTO management (and decisionmakers at OMB) ought to not to take such a comment letter lightly.

(Update:  the seven other comments are now public, and you can see them here.)

Hello colleagues.  The comment letter about USPTO’s DOCX initiative that I discussed in an earlier blog article got finalized and it received one hundred and seven signatures.  It got filed in response to the Federal Register notice (which you can see here) within the due date of August 7, 2023.  You can see the letter, as signed and filed, here.

Thank you very much to the One Hundred Seven signers!

I also sent in a separate comment letter so as to enter three documents into the record.  You can see that separate comment letter, dated August 6, 2023, here.

Hello colleagues.  Yesterday I posted a draft comment letter about USPTO’s DOCX initiative.  Colleagues provided very helpful suggestions and corrections.  With the benefit of the suggestions and corrections, the letter is now “locked”.  It won’t change again.  You can see it here.

Right now the letter has 42 signatures.  The signers have, directly or through their firms or corporations, filed more than 26000 US patent applications in the past ten years.  The signers have, directly or through their firms or corporations, paid more than $38 million in fees to the USPTO in the past ten years.

Please consider adding your signature to those who have already signed it.

It will be recalled (blog article, May 30, 2023) that on May 28, 203, the USPTO had posted a false statement on the USPTO web site.  The USPTO said:

The USPTO strongly recommends submitting Specification, Claims, and/or Abstract in DOCX format which provides better data accuracy.

On May 29, a listserv member posted the question “Isn’t this false advertising or improper legal advice?” and a few hours later, the false statement disappeared from the USPTO web site.

Now on June 19, 2023, the false statement has quietly returned to the USPTO web site.  Quoted above is a screen shot taken on June 19, 2023 from USPTO’s Patentcenter web site.  Continue reading “False statement about DOCX returns to USPTO web site”

One of the many reasons why the USPTO’s DOCX initiative presents professional liability risks arises from USPTO’s use of an ever-changing “black box engine” to render DOCX files into PDF files.  The black box engine is by now up to at least version 19.  Continue reading “One reason why USPTO’s DOCX initiative presents professional liability risks”

(Update:  nine comments got filed.)

This has been a busy week for Federal Register notices by the USPTO that relate to the ill-fated DOCX patent application filing initiative.  We already knew about two Federal Register notices about this:

• • 88 FR 36956 dated June 6, 2023, blinking a fourth time on the start date for the $400 non-DOCX penalty, and
  • 88 FR 37036 dated June 6, 2023 blinking a second time on the ending date for the ability to file an “auxiliary PDF” file by which the applicant may try to protect against USPTO errors in rendering DOCX files.

Now comes a third Federal Register notice:

• • 88 FR 37039 dated June 6, 2023, requesting comments on USPTO’s estimates of the burden that the DOCX application filing initative will impose upon applicants.

In this blog article I briefly discuss this third FR notice.  In a later blog article I will discuss this third FR notice in greater detail.  Continue reading “Time to file comments on DOCX yet again”

There are many reasons why the USPTO’s “auxiliary PDF” approach, which the USPTO hopes would induce reluctant DOCX filers to do DOCX filing, is unacceptable.  (See USPTO blinks a second time on auxiliary PDF with DOCX filing.)  Here are some of the reasons.  Continue reading “Deficiencies in the “auxiliary PDF” approach for DOCX filing”

(Corrected as to the name of the movie.)

A spoonful of sugar helps the medicine go down, says a beloved song in the movie Mary Poppins.  In the case of the ill-conceived DOCX initiative at the USPTO, the spoonful of sugar offered by the USPTO to try to induce filers to swallow the bitter-tasting DOCX initiative has been what it calls the “auxiliary PDF”.   The USPTO has now blinked for a second time on the auxiliary PDF.  Continue reading “USPTO blinks a second time on auxiliary PDF with DOCX filing”

The USPTO had, up until now, blinked three times on the $400 non-DOCX penalty.  Now it has blinked a fourth time on the $400 penalty.  (Typographical error corrected from January 24 to January 17.) Continue reading “USPTO blinks a fourth time on the $400 non-DOCX penalty”

(Update June 20, 2023 — the false statement has returned to the USPTO web site — see blog article.)

Yesterday I reported (blog article) on a first false statement on the USPTO web site.  Here is a second false statement that appeared on the USPTO web site as recently as two days ago (screen shot above):

The USPTO strongly recommends submitting Specification, Claims, and/or Abstract in DOCX format which provides better data accuracy.

Continue reading “A second false statement on the USPTO web site”