Yet another oddity in USPTO’s handling of a DOCX patent application file … this DOCX file is now displayed in “Display References”. Not only that, it is displayed in two different places in “Display References”.
This is a case where we did what USPTO said they want us to do — we e-filed the patent application in Microsoft Word format. The USPTO can then open and use the word processor file using Microsoft Word for its internal purposes. (USPTO says it wants the filer to file in “DOCX standard format” but the problem is that there is no such thing as “DOCX standard”. The USPTO renders the DOCX file using a proprietary rendering engine that I suspect it got from Microsoft, meaning that if you use a non-Microsoft product to create your DOCX file you are taking a big risk.)
Anyway in this case I took that risk. I used Libre Office to create my DOCX file. The way it works when you e-file at the USPTO is that during the e-filing session, the USPTO shows you how its proprietary rendering engine is going to render the DOCX file as a PDF, and then you as the filer have to click an adhesion contract agreeing that whatever it says in the PDF file, that PDF file controls, not the DOCX file. So if the proprietary rendering engine that USPTO uses were to change a math symbol into a smiley face, then you just clicked “yes” on an adhesion contract that says that what you filed on behalf of your client had a smiley face in it, not the math symbol. You as the filer are supposed to proofread the PDF file from the top to the bottom before you click “submit”, to check for smiley faces.
I got lucky. No problems got injected into the PDF by USPTO’s proprietary rendering engine. I clicked “submit”.
I guess that’s not quite accurate. What I really mean is, in my quick review of the PDF during the ten minutes before I clicked “submit”, I did not see that any problems got injected into the PDF. Maybe later it will turn out that the rendering engine that USPTO uses injected some hard-to-notice aberration into the PDF, an aberration that I won’t notice until TYFNIL. But as far as I could see in my quick review before clicking “submit”, the adhesion contract that USPTO made me sign did not burn me this time.
That’s the background, namely that this is a case where I did what USPTO says it wants everybody to do, namely I e-filed this new US patent application in Microsoft Word format rather than in PDF format. So now back to the main point of this blog post.
The main point is that I e-filed this new US patent application using Patentcenter. And then I did what I always do, I clicked around in Patentcenter to see if it all reached the USPTO the way it was supposed to. And look at the screen shot above. What you will see is that the 12-page DOCX word processor file that is my specification, claims and abstract, is listed under “Display References” in the “Reference Forms” tab. Not only that, the 12-page DOCX word processor file that is my specification, claims and abstract, is listed a second time under “Display References” in the “Foreign patent and non patent documents” tab. You can go to either of these tabs and you can go to “quick download” and click on the “DOCX” link and sure enough the word processor file will get downloaded to your computer. You will see the specification, claims, and abstract on your screen, rendered by your own word processor (assuming it knows how to open Microsoft-Word-formatted word processor files).
The “Reference forms” tab is the place where normally what you would expect to see is for example a Form 892 or a form SB08 or a Form 1449. But right now what you see under that tab is the Microsoft Word word processor file that is my specification, claims, and abstract.
Just joking, of course, but when the time comes for the Examiner to examine this case for novelty, the Examiner would necessarily look at the “non patent documents” tab to see what references the applicant has disclosed. And lo and behold there is a document that … wait for it … appears to absolutely render non-novel every character of my filed application, from the first page to the last page.
You can’t make this stuff up. You could try, and you would fail. No way would you be able to make up a story that when you e-file a patent application, a copy of the text of the patent application itself get slotted into the official USPTO application file in the place where applicant-admitted applicant-disclosed prior art gets stored.
It is as if I had filed a document at the USPTO admitting that my spec, claims, and abstract count as a reference, maybe dating from more than a year before my filing date, that the Examiner ought to consider when determining whether my claims are novel.
Now of course I’m just joking. We can certainly count on the Examiner who sees this in the “Display references” section of Patentcenter to immediately say “well in my process of examining these claims for novelty I can ignore this reference”. We can certainly count on the Examiner to immediately say “there is no way the applicant would have e-filed this … it must have been some USPTO mistake”.
And of course TYFNIL we can certainly count on our adversary, the accused infringer, who sees this in the “Display references” section of Patentcenter, to immediately say “well I will just ignore this … I won’t try to use this to try to create some cloud of uncertainty as to whether this patent is invalid”.