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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.
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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.

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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.

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What reel and frame numbers have to do with bitcoin and blockchain and shared ledgers

For their entire careers, US patent and trademark practitioners have lived and breathed a world of “reel and frame numbers” that are somehow intimately connected with the recordation of patent and trademark assignments.  What exactly are reel and frame numbers, and how is it that reel and frame numbers relate closely with bitcoin and blockchain and shared ledgers?  Continue reading “What reel and frame numbers have to do with bitcoin and blockchain and shared ledgers”

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A reminder about training material for DO/EO/US

On December 10, 2019 I provided training material to the USPTO (blog article, training material) about PCT Declaration Number 4.  The idea is that a patent firm located outside the US might be trendy, modern, and up-to-date and might provide a signed inventor declaration (for later US purposes) at the time of filing a PCT application.  The idea is that perhaps 1½ or 2½ years later, when the US national phase is entered, the signed declaration of inventorship for US purposes would already be in the file!  The idea is that the formalities examiner in the DO/EO/US would take a look in the file and would pay attention to the presence of the signed PCT Declaration Number 4.

Unfortunately, all too often in recent months, we have had cases at the DO/EO/US where the formalities examiner at the USPTO fails to pay attention to the presence of the signed PCT Declaration Number 4 in our national-phase entry application file.  Just today, for example, in one of our national-phase entry applications, the formalities examiner at the USPTO mailed out an official Filing Receipt along with Form PCT/DO/EO/903 (371 Acceptance Notice) dated July 17, 2023 falsely stating that we had failed to provide a “properly executed inventor’s oath or declaration” for our inventor.

It is hoped that the USPTO will once again in 2023 provide the training materials to its DO/EO/US formalities examiners, so that they can avoid making this mistake in the future for other US national-phase applicants.

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How to choose which subject for binge-watching?

PCT enthusiasts now have two subjects to choose from for binge-watching.  Just today I finished the video editing of the sixteenth webinar in the recently finished sixteen-webinar series on ePCT.  As a consequence, as of today, a PCT enthusiast may, if desired, binge-watch more than nineteen hours of webinar video about ePCT.  (You can see it here.)

This parallels the over fourteen hours of webinar video about PCT (as distinguished from ePCT) that are available for binge-watching here.  Yes, the PCT enthusiast has not one but two subjects available for binge-watching.