Comments on USPTO’s DOCX initiative

On June 6, 2023, the USPTO published a Federal Register notice (88 FR 37039) requesting comments on USPTO’s estimates of the burden that the DOCX application filing initative will impose upon applicants.  That FR Notice had set a closing date of August 7, 2023 for filing of comments.

As it turns out, nine comments got filed.  You can see them here:

• • Comment by Richard Neifeld (July 27, 2023)
  • Comment by Kilpatrick Townsend & Stockton LLP (July 30, 2023)
  • Comment by Carl Oppedahl (August 5, 2023)
  • Comment by Laurence Hyman (August 5, 2023)
  • Comment by American Intellectual Property Law Association (August 6, 2023)
  • Comment by James Lake (August 6, 2023)
  • Comment by 152 Patent Practitioners, PTAAARMIGAN (August 6, 2023)
  • Comment by Benjamin Keim (August 6, 2023)
  • Comment by One Hundred Seven Patent Practitioners (August 7, 2023)

All of the comments are extremely negative towards USPTO’s DOCX initiative.  Here is what listserv member Richard Schafer had to say about the AIPLA comments:

I haven’t had time to read the entire letter, but based on the executive summary section, I don’t remember seeing a public comment from the AIPLA or any other professional organization that was this strongly negative about a PTO proposal. I can only imagine the frustration certain portions of the PTO must be experiencing to have the largest professional organization in this field take such a strong stance against the entire DOCX proposal.

I’m sure someone in the PTO was lobbying AIPLA to try to prevent this kind of statement. Thankfully, that lobbying has clearly failed.

Here is my reaction to the AIPLA comments.  Highlights of the AIPLA comment letter include:

• • “The financial burden on the public as presented in the Notice would therefore be 79 times greater than that saved by the Office … .”  (letter at p. 5)
  • “In order to minimize the burden, AIPLA strongly urges that applicants be able to file a single document (such as a text-based PDF) that is legally sufficient to correct any errors that may be introduced by IT systems.”  (letter at p. 7)
  • “DOCX filing is fraught with legal and technical challenges that have not been addressed and for which solutions are unlikely.”  (letter at p. 7)

• Historically what one has sometimes observed in comment letters from some professional associations is that a letter might use relatively soft language.  When such use of relatively soft language is observed, it is perhaps understandable given that any professional association has no choice but to try to take into account a range of views among its membership and among the participants in the comment-drafting process.  From my own perspective as a reader of many comment letters from many professional associations, I see this particular comment letter from AIPLA to be about as strongly worded as any I have ever seen from any professional association.  USPTO management (and decisionmakers at OMB) ought to not to take such a comment letter lightly.