Category: Patents

(Update:  it looks like maybe the USPTO might answer my letter about this.  See blog article.)

Anybody who files a US utility patent application is forced to choose among three filing paths, each of which has advantages and disadvantages.  The paths include:

• • Legacy PDF.  This is the path that incurs the $400 non-DOCX penalty.  If you pick the legacy PDF filing path for your patent application, you can draw upon twenty years of experience with Certificate of Correction practice.  If a correction of the issued US patent is needed because of a USPTO error, the path for correction is well understood and predictable.
  • DOCX without applicant-generated PDF.  A first filing path that permits the applicant to avoid the need to pay the non-DOCX surcharge is the filing of the patent application in DOCX format, without also filing an applicant-generated PDF.   If you pick DOCX without applicant-generated PDF, it appears that there is no correction path available to the patent owner at all, except in the relatively rare case where the patent issues within one year of the application filing date.
  • DOCX with applicant-generated PDF.  A second filing path that permits the applicant to avoid the need to pay the non-DOCX surcharge is the filing of the patent application in DOCX format, accompanied by an applicant-generated PDF.  If you pick DOCX with applicant-generated PDF, it is not very clear what correction path is available to the patent owner.  One of the Federal Register notices talks about an “ongoing safeguard”, but it is not clear when a correction request may be filed (maybe only within one year of the application filing date).   

Continue reading “What exactly is the “ongoing safeguard” that the applicant gets from the “auxiliary PDF”?”

Two days ago I published (blog article) the text of a letter that our firm sent to some of our instructing foreign patent firms.  One of the firms wrote back to us about this, asking whether the “auxiliary PDF” option in the DOCX filing path might alleviate the DOCX risks sufficiently to permit following the DOCX filing path, and thus to permit avoidance of the $400 non-DOCX penalty.  Here is how we responded to the instructing foreign patent firm:  Continue reading “What we wrote to one of our instructing foreign patent firms today about DOCX”

Yesterday (blog article) I posted the text of a letter about the $400 non-DOCX penalty that our firm has sent to a number of the non-US patent firms that send work to us.  Today a partner at another patent firm has provided a copy of a letter that that patent firm is sending to a number of its clients.  Here is that letter:  Continue reading “What another patent firm is telling its clients about the $400 non-DOCX penalty”

(See this followup blog post about what we wrote to one of our instructing foreign patent firms after they responded to the letter quoted below.)

Some non-US patent firms entrust to our firm the filing of US patent applications.  We realized that they would need to hear about the $400 non-DOCX penalty that the USPTO started charging on January 17, 2024.  Here is what we wrote about the $400 non-DOCX penalty to some of these non-US patent firms:  Continue reading “What we are telling non-US patent firms about the DOCX penalty”

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?

Is it okay if the attorney sends a paralegal?

Here is what I wrote, trying to answer this paralegal’s question.  Continue reading “Can the attorney skip next Tuesday’s webinar about DOCX risks? Is it okay if the attorney sends a paralegal?”

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.