I received an email message today from a paralegal who is signed up for next Tuesday’s webinar entitled “Reducing malpractice risk with $400 non-DOCX penalty that will start on January 17, 2024”. The paralegal writes:
I am really looking forward to this webinar. I recruited fellow patent paralegals to view the webinar with me (in the same location). ☺
Despite efforts to convince attorneys to attend, there may be some who might not attend. Will there be a small segment in the webinar where you will provide quality control tips for patent paralegals – who in real life are the ones ultimately responsible for looking after their attorneys?
This paralegal’s email inspired the blog article that you are reading now, in which I try to answer more questions, such as:
Can the attorney skip next Tuesday’s webinar about DOCX risks?
What exactly are the risks connected with the DOCX filing path? What can the practitioner do, starting on January 17, to try to reduce these malpractice risks? What are Best Practices, going forward, for dealing with the $400 penalty and the DOCX filing path? Attend a webinar in which these questions are discussed in depth. See the brochure page here.
The USPTO is sticking with its plans to start imposing its $400 penalty for failing to file one’s US patent application in Microsoft Word format. The penalty will start on January 17, or will start on January 18, depending on which sentence of the USPTO’s most recent announcements you choose to trust (blog article). Another way to describe this is that a filer who (a) wishes to avoid at least some of the malpractice risks of filing in Microsoft Word format (the USPTO’s flavor of DOCX), and (b) wishes to avoid having to pay the $400 penalty … will need to include a trusted PDF copy of the application in the e-filing package.
Which means that starting on Thursday, January 18, or maybe starting on Wednesday, January 17, the filer will need to go to some trouble to make sure that a trusted PDF file forms part of the e-filing package.
But it is important to realize that the trusted PDF file does not fully protect the filer.
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One reason that the trusted PDF file does not fully protect the filer is that the USPTO’s e-filing system tampers with the trusted PDF.
As shown in the figure, the first thing that the USPTO does with your trusted PDF is dismember it into TIF images, one per PDF page. And then the USPTO carries out halftoning and resizing. This is the native storage format in IFW. Later if you click to see your trusted PDF, you will find that what IFW gives back to you as a PDF is not bit-for-bit the same as the PDF that you uploaded. The PDF that the IFW gives back to you will, among other things, have a non-identical message digest (hash).
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Here is a real-life example from a real filing of a trusted PDF in a US patent application. At right you can see what I actually uploaded in the PDF.
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And at right you can see what you would actually get back if you were to download the supposedly same PDF file. As you can see, the image is blurred almost beyond recognition.
It seems to me that the filer who wants to avoid the harm caused by the halftoning and resizing would definitely want to index the trusted PDF as “non-black-and-white drawings”. That way the trusted PDF is preserved bit-for-bit.
Here is what the USPTO said today (archived here) about its $400 penalty for failing to file in Microsoft Word format:
As previously noted, we will continue to allow filings in non-DOCX filing formats for new, non-provisional utility patent applications until January 17, 2024. After January 17, those filing new, non-provisional utility patent applications with specification, claims, and abstract in non-DOCX filing formats will incur a surcharge.
It’s clear that filings carried out on January 16, 2023, or earlier, may be done in trusted PDF format without penalty. It’s clear that filings carried out on January 18, 2023, or later, must include a Microsoft-Word-formatted copy of the patent application to avoid the penalty.
But what will happen for patent applications filed on January 17, 2024?
The Federal Register notice says the effective date of the penalty will be January 17, 2024. This means that a filer who files on January 17 (and fails to provide the Microsoft-Word-formatted copy) will incur the penalty.
But the quoted language above says the penalty will be incurred for applications filed after January 17. In other words, a filing that is not “after January 17” will not incur the penalty. And I note that January 17 and “after January 17” have no overlap. They are not the same thing.
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.
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.
(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.
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.
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.
