(Update: it looks like maybe the USPTO might answer my letter about this. See blog article.)
The USPTO has not yet answered a letter from ten days ago, asking about the metes and bounds of the (apparently quite limited) safeguard provided by a protective PDF accompanying a DOCX patent application.
It will be recalled that January 17, 2024 is the day that the USPTO started charging the $400 penalty for failing to file a US patent application in DOCX format. Since then, practitioners have been forced to choose among three filing paths:
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- Legacy PDF. This path incurs the $400 non-DOCX penalty.
- DOCX without applicant-generated PDF. This path avoids the $400 penalty.
- DOCX with applicant-generated PDF. This path also avoids the $400 penalty.
It is clear to every practitioner that the first path (legacy PDF), which is the filing path that all applicants have been using for the past twenty years, is familiar and safe and presents no new professional liability risks.
Most practitioners, I think, have by now figured out that the second path (DOCX with no protective PDF) is so profoundly professionally risky that it is to be categorically avoided.
What remains for most practitioners is to try to figure out the extent to which the third path (DOCX with protective PDF) might be worth considering despite its sizeable professional liability risks. A chief question is whether a patent owner, discovering at licensing time or litigation time that there is a USPTO mistake in the issued patent, would be able to get the USPTO mistake corrected at that time, relying upon the protective PDF. What prompts this question is language in the various DOCX Federal Register notices saying that a correction of a USPTO mistake in its DOCX rendering is only available by petition, and only if the petition is filed within one year of the filing date of the ill-fated patent application.
If indeed the “safeguard” provided by the inclusion of a protective PDF with the DOCX file ceases to be available at the one-year anniversary of the application filing date, then I think practitioners will conclude that the third path is just as unacceptable as the second path. The only remaining path consistent with professional judgment would be the first “legacy PDF” path. (Recall that for small entities the penalty is only $160 and for micro entities it is only $80.)
The USPTO’s Federal Register notices about DOCX and the protective PDF are (unfortunately) unclear on this point. The Federal Register notices name a person at the USPTO to contact with any questions about those notices. I wrote a letter to this person (blog article) and the USPTO received it on January 27, 2024. I emailed an advance courtesy copy of the letter to this person on January 24, 2024.
Ten days have passed and so far, there is no response from the USPTO on this. Here is what I predicted (blog article) about what it would mean if the USPTO were to fail to respond:
I am sure that you will share my sense that until the USPTO were to provide such clarification, many and perhaps most patent applicants are likely to choose the first path (“Legacy PDF”) given that its correction procedure has been well understood for more than twenty years.
Of course they didn’t answer. Have they ever responded (in a meaningful way) before? Only thing that will get the PTO’s attention (and not land someone in jail) is suing the PTO to get the docx rule rescinded. Only thing that will get the rule rescinded is a court order.
At last month’s presentation on the liabilities of DocX filing, I raised the question of suing the USPTO to question the Office’s authority to force this system on us; Carl saw the question and avoided it!
Thank you Ben for commenting. Yes you are quite right, I ducked it.
And so that’s how liberty dies, with a thunderous…silence. People will always choose the path of least resistance, the easiest, which is to always comply, shut up, and just go about your business as if nothing…and hope for the best. Of course the best isn’t what usually follows.