Draft letter to USPTO people about “auxiliary PDF”. Draft dated June 6, 2023.
This letter follows up on our letters to you dated blah and blah about problems with the USPTO’s DOCX initiative, and on our meetings with you on February 1, 2023 and March 23, 2023 about problems with the USPTO’s DOCX initiative.
We see your Federal Register notice (88 FR 36956) about postponing the $400 non-DOCX penalty to January 17, 2024. We see your Federal Register notice (88 FR 37036) about eliminating the expiration date for the ability to file an “auxiliary PDF”, and about committing to preserving the “auxiliary PDF” for 25 years.
The steps set forth in these two FR notices seem to indicate some recognition on the part of the USPTO as to the seriousness of the problems that we have tried to communicate to the USPTO about the USPTO’s DOCX initiative. Implementation of the steps set forth in these two FR notices would not, however, make the USPTO’s DOCX initiative acceptable for applicants and practitioners from the point of view of safety and security, nor would they make the USPTO’s DOCX initiative acceptable from the point of view of professional responsibility risks.
We are writing to describe further steps that the USPTO must take regarding the “auxililary PDF” if the USPTO wishes to get closer to making the USPTO’s DOCX initiative acceptable for applicants and practitioners from the point of view of safety and security, and from the point of view of professional responsibility risks.
Commit to providing a proper message digest. For some twenty years now, the USPTO had earned the trust of applicants and practitioners by providing a message digest in the acknowledgment receipt, which makes a clear record of the particular PDF file that the filer uploaded. Unfortunately the USPTO’s DOCX initiative fails to provide a message digest for the DOCX file that the applicant uploaded, and this has led to a lack of trust in the USPTO regarding such message digests. Missing from the two FR notices is any commitment from the USPTO that going forward, the USPTO will provide a message digest in the acknowledgment receipt, which makes a clear record of the actual “auxiliary PDF” file that the filer uploaded. The USPTO needs to commit to providing such a message digest for the actual uploaded “auxiliary PDF” file, going forward.
Commit to storing the “auxiliary PDF” file bit-for-bit if requested to do so by the filer. The present data flow in USPTO’s systems leads to a serious failure to preserve the “auxiliary PDF” file bit-for-bit. The present workflow breaks up the “auxiliary PDF” file into a plurality of TIF images. Many such TIF images get upsampled or downsampled in resolution. Many such TIF images get resized in ways that alter the aspect ratio thereof. Each TIF image gets halftoned if it contains any grayscale or color. If later the filer tries to download the purported “auxiliary PDF” file from IFW, the resulting PDF file is strikingly different from the originally uploaded “auxiliary PDF” file in terms of message digest and file size. The resulting PDF is also at risk of having been altered in terms of image clarity and aspect ratio. The filer must be permitted to pick either of two document descriptions for the “auxiliary PDF” file. A first document description would follow the present data flow. A second document description would preserve the uploaded “auxiliary PDF” file bit-for-bit in the SCORE system. Alternatively, a checkbox could be provided to specify the “auxiliary PDF” file is to be preserved bit-for-bit in the SCORE system. The USPTO needs to provide such a path for bit-for-bit preservation of the “auxiliary PDF” file, if requested by the filer.
Commit to the “auxiliary PDF” file being controlling from the first instance. As things now stand, the USPTO e-filing system requires the filer to click to indicate the filer’s irrevocable agreement that the DOCX file resulting from the USPTO’s “validation” process is the applicant’s “final submission”. The click-agreement language says:
Please review the DOCX file(s) that is being submitted. By clicking the submit button, you agree to accept the DOCX validation(s) as your final submission.
This quoted language is wholly incompatible with the supposed significance of the “auxiliary PDF” file. An example of acceptable language would be this:
Please review the DOCX file or files resulting from the USPTO’s validation process. Subject to later correction if requested by the applicant or patent owner based upon an auxiliary PDF file (if submitted herewith, and which auxiliary PDF file controls if submitted herewith), you agree to accept the DOCX file or files resulting from the USPTO’s validation process as your final submission.
The USPTO needs to revise the language as described here, and the USPTO needs to preserve this aspect of the filing framework, including the controlling nature of the auxiliary PDF file, in an appropriate Federal Register notice and related rulemaking.
Kindly respond to us with the USPTO’s agreement on these points. We would be glad to meet with you if this would be helpful to you in understanding these points.