USPTO bounces its own rendering of DOCX claims

I just received a Notice to File Corrected Application Papers telling me that the PDF claims in IFW for my newly filed patent application don’t have the right line spacing.   The Notice says that I have to reprint the claims and send them in again.  But get this — I filed those claims as a DOCX file — a character-based file.  Would you like to make a guess who it is that converted that DOCX file into a PDF file?  Yes.  It was the USPTO that did the conversion to PDF.  Not me.  So it’s the USPTO that got the line spacing wrong.

But on top of that, if what I file is a DOCX file, who cares about line spacing?  Who cares about margins?  It is the USPTO’s idea that somehow it is better if an applicant hands in the claims as characters instead of PDF images.  Once the USPTO has characters, the USPTO can print the claims however they wish — single-spaced, double-spaced, wide margins, narrow margins, whatever.  

You just can’t make this stuff up.  To keep this case from going abandoned, I guess I will have to convert the DOCX file into a new PDF file, doing whatever is needed to increase the line spacing in the rendered PDF to whatever the USPTO wants it to be.  And then I will have to upload the new PDF into EFS-Web (or Patentcenter) and then the USPTO won’t use it for anything anyway, because what the USPTO wanted was the DOCX file.

Oh, and you wanna know how the USPTO got the line spacing wrong?  I’ll have to dig around to find out for sure, but I suspect it’s because I did not use Microsoft Word to create that DOCX file.  USPTO uses a PDF rendering engine that renders Microsoft Word files accurately (at least for some versions of Microsoft Word) but that changes things and gets formatting wrong if the DOCX file was created using a word processor other than Microsoft Word.  

But still, no matter what exactly turns out to be the detailed explanation for why the PDF in IFW is 1.49 spaced instead of 1.5 spaced, it absolutely should not matterfor the simple reason that every bit of USPTO workflow in this case is (supposedly, if the USPTO is telling the truth about why it is making us hand in DOCX files) going to be based upon the characters in the DOCX file.  The exact formatting of the PDF that is in IFW is thus irrelevant to any later USPTO workflow.


12 Replies to “USPTO bounces its own rendering of DOCX claims”

  1. I have not been an early adapter of docx filings, but I tried it a few days ago. My spec was rejected because it had mulitple parts – they wanted separate files for the spec, claims, abstract, and drawings. It wasn’t worth the extra work.

    1. Yes but when they start charging the $400 penalty for failing to file DOCX, maybe that will change your sense of whether it is worth it.

  2. Maybe I’m ‘dense’ (quite possible) …. but I have yet to hear any argument for why I would want to send DOCX files to the PTO in the first instance … I will continue to stick with sending PDFs (with OCR) until the bitter end …

    1. A chief reason is that they say they are going to start charging a $400 penalty for anybody who fails to provide Microsoft Word formatted files. In which case you might want to file DOCX whenever you can, just to accumulate experience with it and to identify flaws in USPTO’s handling of it.

  3. Un-@#$%ing-believable. Except it’s the USPTO, so it’s totally believable. Thanks for giving me another example for the definition of chutzpah. And another example of the PTO’s we-don’t-care-we-don’t-have-to attitude.

    This is the sort of case where, before throwing in the towel, I would send several letters and then pick up the phone and politely harangue the people at the USPTO until they concede that there’s NOTHING wrong with the filing, and the error is all theirs and I don’t need to fix a thing. Even though I can’t bill for that. I HATE letting the PTO get away this kind of b.s.

    But then I refuse to file use docx precisely to avoid this kind of thing. At least I have control over my own pdfs.

  4. Sigh … I suppose so. I had contemplated just ‘eating’ the $400, but as it pertains to every blessed paper that’s filed, I would quickly burn through my retirement savings …. Good thing I live in the electrical/mechanical arts world & won’t have to deal with chemical formulae …. only equations

  5. Carl, I agree that this is insanity, but it does sound like maybe it’s time to bite the bullet and pay for a copy of Microsoft Word, since that’s what the PTO is using. You can grumble all you want about how .DOCX should be an open standard (and it should), but at the end of the day you’re wasting time (and potentially money) using a different program. The PTO has given us plenty of other windmills to tilt at.

  6. Carl, did your DOCX file specify a line spacing of 1.5 and the PDF rendering turned it into something different? Or did your DOCX file specify a line spacing of something less than 1.5, and you’re arguing the PTO should ignore that and reformat the text into 1.5 line spacing since they have the characters? Yes, the requirement for 1.5 spacing may be a bit silly if they have a character-based file like DOCX, but I can certainly understand the PTO being unwilling to change the formatting specified by the practitioner as long as that requirement is part of the regulations. Given how much we’ve complained that the PTO’s rendering into PDF can change things we don’t want to change, I have no objection to the PTO refusing to change things deliberately.

    1. Agreed, but the USPTO should have identified the issue before the application was filed. Hopefully, the whole $400 fee will be delayed until the USPTO can improve their document validation.

      In any event, I’ll try to write this a document validation rule into when I do the next release. I already have some basic validation in place, so its just a matter of adding a couple checks to identify whether each paragraph has proper spacing.

  7. Regarding the statement, “But on top of that, if what I file is a DOCX file, who cares about line spacing? Who cares about margins?” …

    Wouldn’t the line spacing and margins of the PDF version (or some other simulacrum of a typed page) still matter for the purpose of administering the application size penalty regime of 37 CFR 1.16(s)?

    (This is not a defense of any of the PTO’s handling of your application, the general notion of mandatory DOCX filing, and the application size penalty.)

  8. The PTO routinely mangled claims, anyway!

    Every practitioner I know is scrupulous about the use of whitespace in claims – we use carriage returns, tabs, and spaces to indicate structure. (Some firms even have rigid, mandatory style guidelines about those features.)

    If you look up any pending application in the PTO database, you’ll see… no whitespace in the claims except for spaces. Everything else is stripped out. It’s one big paragraph.

    Issued patents preserve mid-sentence carriage returns – but tabs and spacing are still nuked.

    It makes no sense.

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