(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.
Indeed to the extent that the most recent communications emanating from the USPTO have any affect on my sense of how things are going, my concerns are more grave and more pessimistic than before, in two different ways.
First, it had seemed to me for a long time that there was some decision group within the USPTO, some group of people, who had long ago unilaterally decided that it is going to be DOCX and it does not matter what practitioners or applicants think about it. And it had seemed to me that we can file all the comments we wish to the Notice of Proposed Rulemaking, and the decision had been made and the comments were not going to make any difference. And a first way that my concerns are more grave and more pessimistic is that as far as I can tell, the locked-in-place nature of this DOCX decision remains in place and if anything is now more locked-in-place than before.
Second, some of the communications seem to signal that there are people pretty high up in the USPTO who “just don’t get it” when it comes to appreciating or understanding the point of view of the applicant or the point of view of the practitioner.
A recent letter from a high-up USPTO person to AIPLA said this:
Thank you for your thoughtful letter and for raising awareness of concerns related to DOCX filing. The USPTO is continuously improving our information technology (IT) to support mission critical needs, both internally and externally. We recognize that many applicants have concerns with the new way of filing patent applications, but believe the requirements are essential for integrity and security of the filing system.
We agree with the AIPLA member feedback that the document of record should be something that the applicant can be assured is the same in the USPTO as what the applicant submitted and filed. We are excited to report that this is built in the USPTO DOCX process. When an applicant submits a DOCX document, our systems generate a hash value based on all elements in that document. This hash value is displayed on the submission’s Acknowledgement receipt. If the document is altered in any way, the hash value associated with that DOCX document will be different than the value printed on the Acknowledgement receipt. An applicant can independently verify that the DOCX document stored in our USPTO systems is the same document that they submitted, by downloading the DOCX document from Private PAIR or Patent Center and then computing the hash value of that document. That hash will match the hash on their receipt. There are a number of free online tools that can be used to calculate the hash value.
Regarding some AIPLA members’ concerns that the DOCX file may still render differently in different environments, the USPTO DOCX process imposes restrictions such that documents appear the same on each computer. Plugins and additional settings are not allowed, with the exception of a few validated tools (e.g., ChemDraw, and the like). Fonts are also limited to a small set of commonly used fonts that do not have variation from machine to machine. In addition, we have tested many DOCX files from different sources and have not seen visual rendering errors.
Although rare, it is possible for a PDF file to render differently on different computers. When this has happened in the past, the USPTO has worked with the applicant to make sure the correct document is recorded in the patent application. The USPTO will continue to provide excellent customer service to our applicants.
Thank you for the suggestion of using text-based PDF as a solution for text filing. This was one of our initial considerations. The USPTO conducted a year-long exhaustive study looking into the feasibility of text-based PDFs. It was determined that although text data are available in some PDFs, the data could not be consumed in a reliable manner. The presentation of text data extracted from a text-based PDF cannot be preserved. For example, headers and footers can be mixed with the content of pages and tables can be lost. PDFs are not meant to store text data and are used as a display format. With DOCX, we are able to transform the document to an XML format which we can pass to our USPTO downstream systems. Furthermore, having this XML data available allows for future cooperation with international XMLization efforts.
We strongly discourage submitting the DOCX and applicant-generated PDF of the same file. This would be duplicative, which would cause confusion as to what would be considered as the authoritative file. Direct submission of DOCX format ensures that submitted files from all applicants are converted to PDF by USPTO systems in a consistent manner.
We appreciate your interest in this important matter and your suggestions to improve the USPTO IT Systems. We look forward to future opportunities to continue to engage with you.
So let’s try to set out the backdrop to this letter.
The general question is, TYFNIL, when it suddenly becomes extremely important to work out whether the thing in the middle of some math formula was a smiley face or a square root sign, and when the patent owner says it is supposed to be one thing and the accused infringer says it is supposed to be the other, how will the judge and jury decide who wins and who loses?
In the old days the answer would be, we look at the file wrapper and we look at the ink on the page of the patent application. Or we look at a PDF file that is pretty much the same thing as “ink on the page”.
The regime that the USPTO proposes to force down the throat of the patent applicant is that unless you are willing to pay a $400 penalty, at 11:45 PM when you upload a DOCX file to the USPTO e-filing system, the USPTO e-filing system will then use a proprietary rendering engine to render it into a PDF. And will then display the PDF on your screen, and with the remaining fifteen minutes between now and midnight it will be up to you to scrutinize the PDF from the top to the bottom to see if for example a smiley face got changed to a square root symbol. And there on the screen in front of you will be an adhesion contract that USPTO says you must sign. This is a click-wrap button that says:
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.
Now as far as I can see, “the final submission” means “the final submission”. If the USPTO’s proprietary rendering engine changed the smiley face to a square root symbol, and if you clicked the continue button, then as far as I can see, you have agreed that the patent application as filed has a square root symbol in that position.
Meanwhile what did the USPTO person write to AIPLA? She pointed out that whenever you e-file anything in EFS-Web or in Patentcenter, of course the ack receipt lists a “hash” for each file that you uploaded. This is not news. It has been this way for many years. What she is getting at is that the idea of a hash function is that it makes it hard for the filer to play fast and loose as to what file exactly they uploaded. One whole point of a hash is that if you change even a single character in a file and calculate the hash of the file, the output of the hash function changes wildly. Another whole point of a hash is that if you were to set a goal of creating a second file that is the same size as the first file, and that has different contents, but that yields the same output when passed through the hash function, in general you will not accomplish that goal.
What she is getting at is that TYFNIL you can bring in an expert who will say something like “I took this DOCX file and calculated a hash of it. And the hash matches what is in the ack receipt from ten years ago. And I rendered this DOCX file into human-readable form using <fill in blank with favorite word processor and version number>. Here is the ink on the page that I got.”
But meanwhile the adversary in litigation brings in an expert who says “this is the PDF from ten years ago that the USPTO generated on filing day, and on filing day ten years ago, the practitioner clicked on an adhesion contract agreeing on behalf of his client that the Office-generated PDF is the patent application of record.”
If those two PDFs don’t match, which one wins?
I have to say I think the judge and jury are likely to enforce the adhesion contract. And it won’t matter a bit what the outcome is of this exercise involving hash values from the ack receipt.
The notion that the USPTO person could think even for one second that pointing to the presence of hash values in the ack receipt would in any way alleviate the harm caused by USPTO’s adhesion contract … this tells me that that USPTO person has no clue what it means to be an applicant or a practitioner. Or to be a litigant defending a patent in court.