Every now and then we receive a notice like this after paying an Issue Fee. It is a Notice to File Corrected Application Papers (“NTFCAP”), and it tells us that our case will go abandoned if we fail to hand in a Substitute Specification, identical to what is already in the file except that it has to have page numbers added.
When I see such a NTFCAP, it annoys me greatly. The fact that we already paid the Issue Fee tells you the following:
- the lack of page numbers somehow did not interfere in any way with USPTO publishing the application at 18 months, and
- the lack of page numbers somehow did not stymie the Examiner, who was able to figure out whether or not to allow the case.
But now, after the Issue Fee has been paid, some USPTO employee who clearly has nothing better to do feels the need to mail out this NTFCAP.
Yes, I get it, there is a rule (37 CFR § 1.52(b)(5)) that says that each page of the specification is required to have a page number on it. Yes, I get it, strictly speaking this specification does not comply with the rule. Yes, this USPTO employee certainly gets credit for having an eagle eye and noticing, long after everyone at the USPTO who could have been affected by the absence of page numbers has completed their work on this application, that the page numbers are not there.
But is it a good use of USPTO’s resources to fill this desk and chair with this employee? Is it a good use of USPTO’s resources to mail out this post-issue-fee NTFCAP? Is it a good use of USPTO’s resources to go to the trouble to set some docket in USPTO’s systems so that later, some USPTO employee will have to get all wound up to mail out a Notice of Abandonment? Is the loss of one’s US patent rights an appropriate penalty for this infraction of the must-have-numbered-pages rule? Does any of this promote science and the useful arts?
It would be one thing I suppose if this discussion were taking place fifty years ago, when all workflow within the USPTO relied upon paper files. In those dark days, yes there was a grave risk that if some USPTO person were to drop some papers on the floor, a lack of page numbers would make it impossible for the USPTO person to work out the correct sequence of pages to be placed back in the paper file.
Indeed if I recall correctly, this “no burden is too great to place upon the customer if down the line it has even a remote chance of some day saving ten seconds of time for one of our government employees” way of looking at things reached its logical extreme in the California federal district court rules. I don’t know if it is this way now, but years ago (if I recall correctly) the California federal district court rules required that each individual page in a multipage document filed in the court had to contain, in its lower margin, absolutely everything that would be needed for a court employee to work out the identity of the case the page belonged in, and the document within the case that the page belonged in, as well as the page number within that document.
The thing is that in 2019, nobody uses paper files any more. If anybody who works at the USPTO were to want to know whether a particular page comes before or after some other particular page in a patent specification, the answer would be found with a single mouse click by looking in IFW. There is no need to consult ink markings at the bottom of pages to work out what is the fifth page in IFW for some document and what is the sixth page in IFW for that document.
This reality about how things work in 2019 explains, of course, how it is that the USPTO had no difficulty carrying out the 18-month publication of the patent application that I am writing about today. This reality about how things work in 2019 explains, of course, how it is that the Examiner had no difficulty carrying out the process of examining the application to decide whether or not to mail a Notice of Allowance.
But this USPTO employee is stuck in 1959, following some procedure that maybe made sense back when the file was a paper file, then but makes no sense now given that the file is electronic, in IFW.
So yes we could ask whether it is a good use of USPTO’s resources, after the Issue Fee is paid, to go to the trouble of mailing out this NTFCAP, and to set the docket so that later somebody at the USPTO will declare the case abandoned if the page-numbering lapse is not corrected.
Which brings us around to USPTO’s recent effort to try to force customers to file patent applications using a word processor file exported from Microsoft Word, rather than uploading PDF files. USPTO has proposed to charge a $400 penalty for the customer who fails to provide a Microsoft Word (Windows) version of the patent application. (USPTO pretends that it will accept so-called DOCX word processor files created by other software than Microsoft Word (Windows) but this does not actually work reliably.) The reader will be reminded that USPTO’s present way of doing this is that you upload the word processor file, and then USPTO renders the word processor file into a PDF file. The USPTO then gives you an opportunity to proofread the PDF file. If you are prepared to accept the PDF file that USPTO prepared as your official file, you click “submit”. Here is what you will see on your e-filing screen in red letters:
The PDF(s) have been generated from the docx file(s). Please review the PDF(s) for accuracy. By clicking the continue button, you agree to accept any changes made by the conversion and that it will become the final submission.
And here is the astonishing part. The PDFs that USPTO generates in this process do not have page numbers on them. I am not making this up!
So every time somebody files a DOCX patent application at the USPTO, the pieces are set into place so that down the line, when the customer pays the Issue Fee, some USPTO employee is going to mail out one of these NTFCAPs. The PDFs which are the official submission will have been missing any page numbers throughout the course of examination, and when this USPTO employee picks up the file after the Issue Fee is paid, for the first time somebody will notice that the page numbers are missing. And the customer will have to take the PDF which USPTO created and will have to put page numbers on the pages. Or the allowed case, in which the Issue Fee has been paid, will be deemed abandoned.