Attend this webinar to dispel five myths about the USPTO’s DOCX initiative.
On January 17, 2024 the USPTO commenced charging its $400 penalty in applications where the filer uses the tried-and-true legacy-PDF path for filing US utility patent applications. The desire to avoid having to pay this penalty has prompted applicants and practitioners to explore the other two available filing paths, namely DOCX-plus-aux-PDF and DOCX-without-aux-PDF, each of which presents substantial risks when compared with the legacy PDF path.
In an attempt to convince applicants and practitioners to take the risky paths, the USPTO has by now presented a staggering over one hundred fifty webinars (blog article). In the webinars, the USPTO has been and continues to be, to put it gently, disingenuous about the risks of the DOCX filing paths.
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- Myth #1. A PDF is a PDF, right? Surely the auxiliary PDF that is provided by the filer in the DOCX-plus-aux-PDF path protects the filer just as fully as the PDF that is provided by the filer in the legacy-PDF path? The answer is “no”.
- Myth #2. Past results are a guarantee of future performance, right? If a practitioner did a few DOCX filings in the past, scrutinizing the apparent results closely, and did not identify any USPTO rendering mistakes, surely this means that there is no need for the practitioner to carry out close scrutiny of such apparent results in future DOCX filings? The answer is “no”.
- Myth #3. Close scrutiny during the e-filing process will suffice to avoid risks, right? In any particular future DOCX filing, if during the e-filing process and before clicking “submit”, the practitioner closely scrutinizes the intermediate results, and does not identify any USPTO rendering mistakes, surely this means that any down-the-line risks have been successfully avoided and it is safe to click “submit”? The answer is “no”.
- Myth #4. Microsoft Word is safe, right? When the USPTO first announced its DOCX initiative in 2018, the USPTO made no secret of what it really wanted, which is for filers to purchase and use Microsoft Word for the DOCX filings. Surely this means that if I use Microsoft Word for DOCX filings, I am safe? The answer is “no”.
- Myth #5. If I keep it simple, then I am risk-free, right? If the patent application that I am getting ready to file contains no tables, no math formulas, no chemistry structures, and no Greek letters, then there’s nothing to go wrong and I might as well file in DOCX, thus saving the $400, right? The answer is “no”.
Attend this webinar to dispel these five myths.
Who should attend? Our target audience is patent attorneys. If the DOCX filing path in a particular patent application were to lead some day to a malpractice claim, it is the attorney who would have to deal with it. In an office where some patent office e-filing tasks are carried out by paralegals, it is the attorney who is responsible to train and supervise those paralegals in their work.
Patent paralegals are welcome to attend. But please try to convince your patent attorney boss to attend as well, because he or she really needs to attend for all of the reasons mentioned above.
Who is the presenter? Your professor is Carl Oppedahl, a partner in Oppedahl Patent Law Firm LLC (“OPLF”). 
He has spent more than twenty years writing and prosecuting patent applications for clients. Carl’s firm sponsors the Patent Practice listserv, an email discussion group for US patent practitioners with hundreds of members in the US and in other countries. Carl’s law degree is from Harvard.
Here’s what some attendees had to say about a recent seminar presented by Carl:
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- “This was the best value I’ve experienced in a legal seminar. The amount of relevant material for the time spent was tremendous.”
- “I liked the whole seminar; Carl is very engaging; good instructor!”
- “The seminar was very worthwhile.”
When? The webinar will take place on Wednesday, February 21 starting at noon Mountain Time. Please schedule 120 minutes for this webinar. There is no introduction or breaks. The entire duration of the event will be the program itself. We will start promptly at noon Mountain Time.
How do I register for this webinar? To register, click at right.
What is the cost? The registration fee is $79 per login location. This covers multiple attendees at a single login location. (This means several attendees could sit in a room together, watching a single screen.) The registration fee provides one login link for one login location.
I attended the webinar about DOCX risks that took place on January 16, 2024. Do I need to attend this webinar? It depends on whether you fully appreciate the profound risks of using a filing path other than the “legacy-PDF” path. If despite having attended that webinar, you still believe any of the myths mentioned above, then you definitely need to attend this webinar.
I attended the webinar about DOCX risks that took place on January 16, 2024. Do I get a discounted registration fee for this webinar? Sorry, no. Keep in mind that our registration fee for any of our webinars is much less expensive than most registration fees for CLE programs presented by mainstream CLE providers.
I attended one or both of the webinars that took place on May 10 and May 12, 2023. Do I need to attend this webinar? The two webinars that happened in May of 2023 are available for free viewing at this page. Many things have changed since those webinars took place, including a Federal Register notice dated June 6, 2023.
If the USPTO answers my January 24, 2024 letter about the “ongoing safeguard” before February 21, will the answer be discussed during this webinar? You are asking about the letter that is described in this blog article. The answer is “yes”.
Can I use one login link at multiple locations? The login link is specific to you, and it won’t work if two or more people try to log in using that link. The webinar platform tries to block this. Please just do the right thing and pay as many registration fees as the number of login locations that you plan to use.
Some firms try to use a high-tech solution to somehow log in one attendee on a webinar and to try to broadcast the webinar video and audio to multiple firm or employee location. This almost never works. The webinar platform tries to block this, and firms that try to do this usually end up with video dropouts and audio dropouts. Please just do the right thing and pay as many registration fees as the number of login locations that you plan to use.
Will presentation materials be available? Yes, we will make presentation materials available as a PDF download, shortly before the webinar. It will also be possible to download the presentation materials during the webinar, from the webinar platform. The materials will include a UCOA (uniform certificate of attendance).
Will the webinar system give me an “add to calendar” link? We are glad you asked this question. The answer is “yes”. And you absolutely should use the “add to calendar” function, for at least two reasons:
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- You might not be in the Mountain Time zone. If so, you might get mixed up about adding an hour or subtracting an hour for your own time zone. The “add to calendar” function automatically takes your time zone into account.
- The calendar entry will contain your login link. This means that when the day comes for you to log in at the webinar, you will not need to scramble around trying to figure out how to log in. Instead, you can simply click on the login link in your calendar.
Are the webinars CLE-accredited? Our webinars cost very little compared to the cost of most commercial attorney CLE webinars. Part of how we keep the cost down is by avoiding the burdensome and expensive paperwork and filing and reporting and record-keeping requirements imposed by most states to gain CLE accreditation.
Colorado. This program is accredited by the Colorado Supreme Court (course code 840464, notice of accreditation). If you wish to seek CLE credit with the Colorado Supreme Court after attending the webinar, it is up to you (not us) to do the needed online filing with the Colorado Supreme Court.
States other than Colorado. We will provide a Uniform Certificate of Attendance (“UCOA”) to each attendee. In the past, attendees have sometimes found that they can get CLE credit in their own state (other than Colorado) through their own efforts, using the UCOA. We are unable to offer assurances that this will work. In any event if you do receive CLE credit in your state, it will be because you yourself handed in the UCOA and did whatever else your state requires for CLE credit. Please do not ask us for assistance in getting such credit.
What if I miss the webinar? Can I get my money back? No, you do not get your money back if you miss the webinar. The best way to deal with it if you realize that you are going to miss the webinar is to make the login link available to some colleague who can attend.
What if I find that I will not be able to attend the webinar? Can I cancel my registration and get a refund? No, there are no refunds for this webinar. The best way to deal with it if you realize that you are going to miss the webinar is to make the login link available to some colleague who can attend.
Another option, although we do not recommend it, is to wait until the eleventh hour and then register for the webinar. There are at least two reasons not to do this:
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- First, the webinar platform only permits a fixed number of people to attend. If you wait until the eleventh hour, it might turn out that you cannot register because all of the registration slots are already taken.
- Second, you might forget to register, and then you would miss the webinar.
Will a recording be available? We do not have any present plan to make a recording available for later viewing.