AIPLA and 123 Patent Practitioners each file a comment to OMB about USPTO’s DOCX initiative

It will be recalled that there was an opportunity to help the Office of Management and Budget appreciate the problems with USPTO’s plans to charge a $400 penalty for those who fail to file their patent applications in Microsoft Word format.   This opportunity appeared in a Federal Register notice dated September 27, 2023 (88 FR 66414).  It established a due date of October 27, 2023 for public comment.

I was honored to be among the signers of a comment letter from One Hundred Twenty-Three Patent Professionals dated October 27, 2023.  This was a lot of work for David Boundy, to whom the patent community is thankful.  You can see the letter here and it is archived here.

I am delighted to see that AIPLA has also filed a comment on this.   You can see the letter, which is dated October 27, 2023, here and it is archived here.

It will be very interesting to see what, if anything, the Office of Management and Budget decides about this DOCX issue.

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:

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.

Comment letters about DOCX got sent

(Update:  the seven other comments are now public, and you can see them here.)

Hello colleagues.  The comment letter about USPTO’s DOCX initiative that I discussed in an earlier blog article got finalized and it received one hundred and seven signatures.  It got filed in response to the Federal Register notice (which you can see here) within the due date of August 7, 2023.  You can see the letter, as signed and filed, here.

Thank you very much to the One Hundred Seven signers!

I also sent in a separate comment letter so as to enter three documents into the record.  You can see that separate comment letter, dated August 6, 2023, here.

Please sign this letter about DOCX

Hello colleagues.  Yesterday I posted a draft comment letter about USPTO’s DOCX initiative.  Colleagues provided very helpful suggestions and corrections.  With the benefit of the suggestions and corrections, the letter is now “locked”.  It won’t change again.  You can see it here.

Right now the letter has 42 signatures.  The signers have, directly or through their firms or corporations, filed more than 26000 US patent applications in the past ten years.  The signers have, directly or through their firms or corporations, paid more than $38 million in fees to the USPTO in the past ten years.

Please consider adding your signature to those who have already signed it.

False statement about DOCX returns to USPTO web site

click to enlarge

It will be recalled (blog article, May 30, 2023) that on May 28, 203, the USPTO had posted a false statement on the USPTO web site.  The USPTO said:

The USPTO strongly recommends submitting Specification, Claims, and/or Abstract in DOCX format which provides better data accuracy.

On May 29, a listserv member posted the question “Isn’t this false advertising or improper legal advice?” and a few hours later, the false statement disappeared from the USPTO web site.

Now on June 19, 2023, the false statement has quietly returned to the USPTO web site.  Quoted above is a screen shot taken on June 19, 2023 from USPTO’s Patentcenter web site.  Continue reading “False statement about DOCX returns to USPTO web site”

Time to file comments on DOCX yet again

(Update:  nine comments got filed.)

This has been a busy week for Federal Register notices by the USPTO that relate to the ill-fated DOCX patent application filing initiative.  We already knew about two Federal Register notices about this:

    • 88 FR 36956 dated June 6, 2023, blinking a fourth time on the start date for the $400 non-DOCX penalty, and
    • 88 FR 37036 dated June 6, 2023 blinking a second time on the ending date for the ability to file an “auxiliary PDF” file by which the applicant may try to protect against USPTO errors in rendering DOCX files.

Now comes a third Federal Register notice:

    • 88 FR 37039 dated June 6, 2023, requesting comments on USPTO’s estimates of the burden that the DOCX application filing initative will impose upon applicants.

In this blog article I briefly discuss this third FR notice.  In a later blog article I will discuss this third FR notice in greater detail.  Continue reading “Time to file comments on DOCX yet again”

USPTO blinks a second time on auxiliary PDF with DOCX filing

(Corrected as to the name of the movie.)

A spoonful of sugar helps the medicine go down, says a beloved song in the movie Mary Poppins.  In the case of the ill-conceived DOCX initiative at the USPTO, the spoonful of sugar offered by the USPTO to try to induce filers to swallow the bitter-tasting DOCX initiative has been what it calls the “auxiliary PDF”.   The USPTO has now blinked for a second time on the auxiliary PDF.  Continue reading “USPTO blinks a second time on auxiliary PDF with DOCX filing”