What happens if you file using a DOCX file

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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”. 

Right?

6 thoughts on “What happens if you file using a DOCX file

  1. Carl you said “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.”

    The PTO has no authority to have “that PDF file control[].” The statute controls. Specifically, the statute controls what is required for a filing date. The statute was amended back in the 1980s to define the filing date to not require payment of filing fees in response to the Commissioner of Patents’ decision that paying the fee was a condition of obtaining a filing date. Congress did not like that decision, and therefore changed the law. A consequence of that changes is the current version of 35 USC 111(a)(4), which reads “(4) Filing date.-The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.” You will note that “date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.” leaves no room for the USPTO to deny a filing date to what it “received.” Hence, what the USPTO “received”, not what it converted to pdf form, controls as to what subject matter and on what date, the filer is entitled to a filing date. Moreover, since the click-through requirement was not promulgated with notice and comment, it most certainly is not entitled to Chevron deference. And since it is contrary to the statute, it is entitled to neither Chevron nor Skidmore deference.

  2. Besides, what is the reason why the PDF file should be the controlling copy, anyway? The whole justification for DOCX submissions is for the PTO to be able to use the text in the DOCX file. If the PDF converted from the DOCX file is going to control, then there’s no reason to insist on submitting anything but the PDF file. If they’re really going to use the DOCX file, then why even bother to create the PDF file? The logic of the system completely fails.

    • Oh that’s an easy question to answer.

      The answer is that the USPTO knows perfectly well that there is not really any single DOCX standard, even though USPTO maintains the fiction in its public documents that there is a single DOCX standard. Given that there is not really any single DOCX standard, then if USPTO were to permit the applicant to say “what controls is what was in my DOCX file” then the USPTO would risk the applicant being able to get away with saying “when you render the DOCX correctly using my word processor, you get this character C1 instead of the character C2 that the USPTO wrongly got when they used their proprietary rendering engine”. USPTO wants to be able to deny the applicant being able to point to its own word processor as being a legitimate way of rendering the DOCX file. So USPTO renders the DOCX file using its own proprietary rendering engine into a PDF and makes you agree to the adhesion contract that the USPTO-generated PDF rendering controls.

      What’s particularly disingenuous about this is USPTO’s continued insistence that supposedly there is some single DOCX format, which is the underpinning of its notion that nobody should really object to being forced to agree to the adhesion contract.

      The thing is if it were really true that there is truly some single DOCX standard, then no matter who was rendering the DOCX into PDF, no matter which word processor they might use, no matter which rendering engine they might use, they would always get the same PDF. In which case there would not really be any need to force the filer to agree to an adhesion contract at all.

      • Carl, you may well be right. But I guess my question wasn’t clear enough. What I really am curious about is what justification (if any) has the *PTO* given for making the PDF the official document. They can’t admit to yours, because that would be the admission against interest that the DOCX idea is flawed. But has the PTO ever even been asked that question? I’m tempted to sign up for one of the patent center webinars and try to see whether they’ll answer the question, even though the webinar content itself is worthless.

  3. Hmm. I have yet to file a docx application, but when I get around to it, I’m going to include a sentence in the docx file that says something to the effect of, “This original docx file is the controlling document, and despite anything the USPTO may require me to click on in order to submit this file and thereby potentially reduce the filing fee, it is this docx document that is controlling, and not some USPTO pdf-rendered version thereof, since that ‘requirement’ is ultra vires. Furthermore, by rendering this docx file into pdf format, the USPTO agrees that it is the docx format that controls.” Might be hard to get a court to enforce the second sentence, not quite as hard with the first, I suspect.

  4. Yes in law school in contracts class I recall reading about “the battle of the forms”. Two entities on two sides of some transaction would each try to get in the last word by putting terms and conditions on the various pieces of paper that they would send to each other, the packing slips, the bills, the payment vouchers. Each one would hold out some hope that their document would control and that the terms and conditions that the other side had attempted to inject into the relationship would get nullified by the more recent document.

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