As things stand right now, the USPTO’s stated plan is to proceed with its $400 penalty, starting April 3, 2023, for filers who decline to take the professional liability risks of filing in the DOCX way that the USPTO has prescribed. It will be recalled (blog article) that on February 1, 2023, five representatives of the EFS-Web and Patentcenter listserv communities met in a videoconference with some USPTO people with a goal of deflecting the USPTO from some of the imminent harmful aspects of its DOCX initiative. (The USPTO limited the videoconference to 30 minutes.) We sent a thank-you letter to the USPTO shortly thereafter.
After that, we reviewed our notes from the videoconference and realized that USPTO’s apparent plans were worse than we fully appreciated during the 30-minute video conference. We realized that more needed to be said to the USPTO. Today we sent a followup letter.
This followup letter is important reading for many people, including the following:
-
-
- USPTO Director Kathi Vidal;
- USPTO Commissioner for Patents Vaishali Udupa;
- people at professional associations such as AIPLA and IPO who have been offering comments to the USPTO about the DOCX initiative;
- patent practitioners who use Libre Office to prepare patent applications for filing at the USPTO;
- patent practitioners who use Google Docs to prepare patent applications for filing at the USPTO;
- patent practitioners who use any word processor other than US variants of Microsoft Word to prepare patent applications for filing at the USPTO;
- patent practitioners who file patent applications at the USPTO based upon instructions from foreign patent counsel; and
- patent practitioners who may not have fully appreciated the professional liability risks that will flow from the DOCX filing paths that are presently planned by the USPTO.
-
It is, of course, too soon to know whether the USPTO decisionmakers will pay attention to the letter and focus on the points made in the letter. As mentioned above, the USPTO’s present stated plan is to proceed with its $400 penalty, starting April 3, 2023, for filers who decline to take the professional liability risks of filing in the DOCX way that the USPTO has prescribed. We can only hope that the USPTO decisionmakers will see sense about all of this.
“It must be deeply frustrating to the USPTO that we’re asking you to do additional work in order to accommodate the requirements of a broader cross-section of filers than the USPTO had originally considered. We suggest that these costs are the inevitable consequence of the USPTO’s neglect of the law.”
Translation: “If this thing goes to court, you’re going to get smacked good and hard, because you guys didn’t listen to people as the law requires. Bummer.”
Good letter. Thanks for putting it together and sending it.
A grotesque irony of all of this is that I filed two applications on PatentCenter using .docx files generated from LibreOffice. I carefully scrutinized the upload “preview” version, as well as filing the auxiliary pdf. They were straightforward text documents, without formulae, tables, or symbols that risk “conversion mangling.”
Here it is six weeks later, and I have no official filing receipt, Patent Center reflects no filing date, and it took a month for the applications to even show up as “undergoing pre-examination processing.”
Whereas the last conventional filings via pdf in EFS-web showed up in a day or two, and I had an official filing receipt in two to three weeks. So much for streamlining workflows. Also, the application serial numbers did not appear in EPAS, delaying my ability to record an assignment for a month. That in itself could theoretically be problematic.
For one of the early attempts at “e-filing,” EFS-web was pretty functionally fantastic. Ironic that USPTO will replace that system with what appears to be complete dog doo 15 years later.