2024-05-29 DOCX filing presentation.pptx

The hazards of filing USPTO patent applications in docx format

1. Browdy and Neimark, PLLC June 2024 DOCX Patent Application Filing By Roger L. Browdy

2. Introduction - What We Will Discuss Legacy practice DOCX practice DOCX plus Auxiliary PDF DOCX Pitfalls Auxiliary PDF Pitfalls Ways to Avoid the Penalty Malpractice risks of DOCX filing What to do?

3. LEGACY PRACTICE Patent applications have been filed electronically using the PDF format since electronic filing began Attorneys have developed procedures over that time to deal with such filings Any professional liability risks are familiar and well known Firms have decided which tasks and decisions can be delegated to paralegals and which cannot USPTO mistakes are correctable by filing Certificates-of-Correction (“CofC”); no petitions are needed If the USPTO has made a mistake, it must issue the CofC

4. DOCX PRACTICE Patent applications must be filed in DOCX format unless a surcharge of $400/$160/$80 (Large/small/micro) is paid Does not apply to provisional and national stage applications Can file with Auxiliary-PDF that corresponds exactly to the DOCX file Preliminary amendments filed on the same day as the application will be subject to the surcharge if not filed in DOCX form

5. DOCX Practice (Cont.) DOCX is a format that is purportedly applicable to all word processors The USPTO implemented DOCX supposedly so that they have a searchable version of the application in the file record While the USPTO says DOCX is safer and more accurate, experience and common sense tells us this is false The DOCX file that you upload (“D1”) will not actually control what is in the application

6. DOCX Practice (Cont.) During the filing process: The USPTO creates a new and different DOCX file (“D2”) The USPTO generates a feedback document from D1, pointing out errors in formatting, sections, claim numbering, grammar, claim language, and a myriad of other perceived errors. The feedback document should be reviewed and any necessary changes should be made, which means that the DOCX file received from the client may not be the same as the one uploaded to the USPTO. If a declaration is sent for filing with the application, the declaration may not be acceptable for filing because the application has changed The review and revision of the D1 file incurs professional time costs The D1 file is discarded by the USPTO This means that before submitting the application the D1 should be compared line by line to the D2 file to make sure the USPTO did not create any errors The D1 file does not appear in the acknowledgement receipt

7. DOCX Practice (Cont.) During the filing process (cont.): D2 may change over time, depending on the version of the USPTO’s black box rendering engine Relevant times for the content of D2 which will be used by the USPTO: Publication time Issuance time The black box rendering engine was at version 18 as of December 2023; at least one version change was made in January 2024 There is no log of any version changes made, and no record of the changes made in any given version To correct any errors appearing in the application, a petition is necessary D1 is not used in the petition process D2 is used Proof of what was in the D1 file is impossible, and D1 is irrelevant to the petition

8. DOCX Practice Plus Auxiliary PDF An “auxiliary PDF” (“aux-PDF”) may be filed with the DOCX D1 file This means filing procedures must include the creation of an aux-PDF file each time the D1 file is changed It is also prudent to have a second pair of eyes to make sure the version of the aux-PDF file matches the version of D1 that is to be uploaded The aux-PDF file does not control – though it is not clear from the USPTO notices on the subject what the authoritative document is It is merely to use with a petition should the USPTO processing cause errors in the application text, which petition may or may not get granted TYFNIL

9. Judgment Call During DOCX Filing Process D1 is the DOCX file that is uploaded during filing The USPTO rendering engine generates a new and different D2 DOCX file that you will be able to review during the filing process What matters is not what D2 looks like at filing, but what it looks like at publication and issuance time, based on the version of the rendering engine in use at those times During filing someone has to decide whether or not D2 will control, or whether the filer should back up and file using the Legacy PDF format Who will be that decider? A paralegal, attorney or the client? What will the decision review cost? Certainly more than the $400 surcharge. At issuance time (and possibly at publication time), a line-by-line review will be necessary of the issued patent to see whether the USPTO’s version of the rendering engine has introduced any errors. What will this review cost? Certainly more than the $400 surcharge

10. DOCX Pitfalls The behavior of USPTO Rendering engine (“Black Box Engine”) changes without notice or explanation For example, today it might not change √ to a ∞, but it might tomorrow. Or it may not change a µ to a u today, but it may tomorrow The continuation application that is filed on one day using the specification filed yesterday may be converted differently The Director in the Director’s Blog let slip that the Black Box Engine was at version 18 in December 2022

11. DOCX Pitfalls (Cont.) Microsoft Office 365 complicates the Black Box Engine It is cloud-based and neither its users nor the USPTO has any control over when and how it changes If Microsoft Office 365 changes and the B lack Box Engine has not also changed to accommodate those changes, more errors can occur If the Black Box Engine changes and Microsoft Office 365 has not also changed, more error can occur At one point years ago, the Black Box Engine likely fairly closely matched Microsoft Word Then the USPTO realized it could not require use of a specific word processor, and it modified the Black Box Engine to try to work accurately with other non-Microsoft word processors, such as Google Docx, Office Online, LibreOffice, and Pages for Mac The Black Box Engine is no longer matched to Microsoft Word No single rendering engine will ever accomplish error-free rendering of DOCX documents for all word processors Using Microsoft Word will no longer protect you and guarantee accurate results

12. DOCX Pitfalls (Cont.) The aux-PDF shows up in the USPTO file record (“IFW”) as a separate item When the filer uploads the aux-PDF file, PatentCenter (“PC”) generates an acknowledgment receipt with a message digest and the uploaded aux-PDF file is discarded The individual pages of the aux-PDF file are converted to TIF images, which are then flattened Those adjusted TIF images are then converted and recombined into an IFW purported auxiliary PDF The message digest of the IFW purported auxiliary PDF does not match the message digest of the aux-PDF file uploaded by the user Anecdotally, the actual uploaded auxiliary PDF was 175K in size and the purported auxiliary PDF in IFW was 500K in size – not the same file

13. DOCX Pitfalls (Cont.) Metadata in D2 The D1 file may contain custom metadata inserted by either the user or the word processor. The USPTO does not scrub metadata from D1 when creating D2 If there is any custom metadata in the D1 file, it will still be visible in the D2 file It is important that the D1 file be scrubbed of metadata before it is uploaded

14. DOCX Pitfalls (Cont.) If a DOCX application is filed, but a preliminary amendment is filed on the same date in PDF form only (i.e., not a DOCX file), the $400/$160/$80 penalty will be charged During the lifetime of EFS-Web, there was a "Legal Framework for Patent Electronic System" that set forth what was required to correct a discrepancy between a PDF document filed in EFS-Web and the PTO's representation of that document in the electronic file wrapper. The Framework specified the evidence a user would have to show, using such language as: The user would be required to present: (1) the Electronic Acknowledgement Receipt; (2) a copy of the missing files as submitted; and (3) a signed petition accompanied by a statement stating that the attached files are the same as those originally submitted and mentioned in the Electronic Acknowledgement Receipt [...] The Electronic Acknowledgement Receipt and statement will serve as prima facie evidence [...] The PTO has not yet published an equivalent Legal Framework covering Patent Center or documents filed in DOCX format, though it has announced its intention to do so

15. DOCX Pitfalls (Cont.) For a sobering picture of the problems created by the USPTO’s ill-advised required DOCX filings and attempts to correct those problems by petition, see https://ipwatchdog.com/2024/03/19/trains-planes-automobiles-correcting-docx-related-errors/id=174452/#

16. Aux-PDF Pitfalls Only one aux-PDF file may be filed The aux-PDF cannot be filed so that it is saved in SCORE Therefore, the USPTO will flatten the aux-PDF and as a result, may mangle the aux-PDF file and the message digest in the acknowledgement receipt will not match the IFW mangled version of the aux-PDF Thus, to prove what you actually uploaded, you will have to preserve the aux-PDF locally, at least for the life of the patent plus 6 years The aux-PDF file is not the controlling document , the D2 DOCX file will control. 87 FR 2522 6 states: However, if a correction to the record is needed due to an error or discrepancy that is not supported by the validated DOCX file(s), but is instead only supported by the applicant-generated PDF … , the applicant should file a petition under 37 CFR 1.182 that identifies how the applicant-generated PDF supports the requested correction to the record. The petition may or may not be granted. And again, the fight will certainly cost more than the $400 penalty The USPTO has not been clear about the aux-PDF will provide a reliable correction mechanism – life of patent? One year from application filing date? Wh at will be the proof required to have the petition granted?

17. Aux-PDF Pitfalls (Cont.) The aux-PDF file must correspond to the DOCX file. See 87 FR 25226: Please note that if an applicant makes changes to the DOCX file(s) prior to filing the application as a result of the validation process, then the applicant should ensure that the applicant generated PDF corresponds to the revised DOCX file(s). The aux-PDF file must contain all the sections of the DOCX file. See 87 FR 25226: If filing an applicant-generated PDF in Patent Center, it should be a single PDF and contain all the sections being filed in DOCX format.

18. Aux-PDF Pitfalls (Cont.) The aux-PDF filing adds professional time to the e-filing process – most likely more than the $400 penalty costs Every time a change is made to the DOCX file during the filing process, the filer must remember to generate another aux-PDF file When the e-filing is being done, the correct aux-PDF file must be uploaded This adds a new category of malpractice risk – accidently uploading the incorrect version of the aux-PDF file

19. Aux-PDF Pitfalls (Cont.) Remember that the purported aux-PDF file in the IFW is not identical to the version of the aux-PDF file that the filer uploaded It likely has a different file size It has been flattened Its message digest will not match the acknowledgement receipt message digest To be on the safe side, the uploaded version of the aux-PDF file must be retained at least for the life of the patent plus 6 years Who pays? What about the possible malpractice risk if that uploaded version is accidently deleted. Are these costs more than the $400/$160/$80 penalty?

20. Possible Ways to Avoid the $400 Penalty File a provisional application a day before the utility application is to be filed and incorporate by reference. File a DOCX file having each page as an image These possibilities may resolve the issues, but will surely cost more than $400 of professional time Makes more sense from a liability and financial perspective to file Legacy PDF and pay the $400 For continuations, divisionals of applications and non-provisionals of provisionals that are identical to the parent/provisional which were filed before the DOCX penalty went into effect, explicitly incorporate by reference the parent/provisional application No petition is required for correction May not work after the patent issues File a PCT application which avoids the $400 penalty when entering the national stage Additional benefit comes from the application of the ‘unity of invention’ restriction standard instead of the ‘distinct invention’ standard Avoids the $400 penalty and has trusted PDF filing procedures

21. Malpractice Risks There are many places during the DOCX filing process and even later, that may be viewed as malpractice, for which extra malpractice insurance will be needed to cover the risks These are some of the things US counsel could be accused of: Failing to do a sufficient comparison of the D1 and D2 DOCX files during the e-filing process Failing to study and review the Feedback Document sufficiently during the e-filing process Uploading an aux-PDF file that does not match the D1 file Failing to do a sufficient proofreading of the 18-month publication Failing to carry out the proofreading of the 18-month publication Failing to do a sufficient proofreading of the issued patent Failing to carry out the proofreading of the issued patent Accidentally deleting the locally saved aux-PDF file or modifying it so that it no longer match the message digest in acknowledgement receipt Failing to do a sufficient job of informing the client of the risks associated with the risky DOCX filing path instead of the trusted legacy PDF filing path Failing to file a grantable petition to correct any errors

22. How to Avoid These Pitfalls and Risks? The only way to avoid all these additional risks is to file using the Legacy PDF. Or file a PCT and a follow-on national stage (though rumor has it that eventually, the DOCX requirement will apply to national stage applications as well)

23. What Do We Do? We strongly recommend that all new non-PCT applications be filed using Legacy PDF. If the client insists on filing in DOCX format, we will do so, along with an aux-PDF file Our service charge for doing so is $400

24. The End If you have any questions, you can contact me: Roger L. Browdy Browdy and Neimark, PLLC 1625 K Street, NW Suite 550 Washington, DC 20006 (202)-628-5197 (office) (202)-277-5198 (mobile) [email protected] Special thanks to Ronni Jillions, my partner at Browdy and Neimark, for helping put this together.