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January 07, 2020


Thanks for the Oppedahl link.

As I recall, once upon a time he ran a listserv forum. I wonder if he still runs it. It had some cludgy aspects to it, but had a much better than your typical blogging effort rapport between contributors.

To the point of the article, I believe that Dave Boundy has provided feedback to the USPTO also critical of the DOCX (and associated charging of fees).

Will the USPTO listen?

I remain somewhat:______

The DOCX uploads also fail to handle in-specification formulas well too.

Earlier today the USPTO reached out to me and I have provided them with some example files that cause the DOCX intake to fail, as well as "fixed" versions that succeed. I am glad to see that they are taking this issue seriously.

@EFS Pain: I tested some formulas and did not see a problem, but if you are you should get in touch with the USPTO. That's a serious problem.

Quick update. I received this from the USPTO:

"If people have specific errors (i.e. files that won’t upload properly), please feel free to have them email the eMod@uspto.gov address. The other option is for people to contact the EBC, either via email (EBC@uspto.gov) or phone (866-217-9197). The agents that staff the EBC will create a ticket that is escalated directly to our team.

We greatly appreciate when people bring issues to our attention so that we can address them."

Why take chances with the USPTO cram down "acceptance" procedure? Does the USPTO make the filer do this at time of filing? Crazy. Folks with formulas and the like will just have to file in PDF and charge the $400 to the client....

Great post. With the current framework, the $400 fee would frequently feel worth paying given the amount of time it takes to confirm that a .docx file was properly converted to PDF by the automated process. Given billable hour values, it may often just be cheaper to pay the fee, and even where it's a push or worse, it's much easier to sleep at night trusting Microsoft or Adobe to handle PDF conversion.

Mike, thanks for sharing you experiences. "Only after hours of manual debugging were we able to satisfy EFS." Did you bill your clients for that time? :-)

Skeptical, the Oppedahl listservs still exist (although there have been problems receiving emails since the servers were switched in November), and the contributions there are uniformly of higher quality than those in the comments sections on blogs. For many of us, those listserv fora are far more informative and helpful than any CLE sessions. And a good number of listserv subscribers reported problems with docx similar to what Mike reported.

A large group of us listserv people signed onto a letter that David Boundy prepared criticizing the proposed rule changes, especially the docx requirement. That letter was submitted as a comment to the PTO.

I don't understand why the PTO didn't propose to do like WIPO, viz. continue to let us file pdfs that *we ourselves* create, but with the option of *also* submitting docx files for use in case of discrepancy or if something is unclear, but which won't be made public. One cynical listserv subscriber viewed the docx requirement as something the PTO knows conscientious practitioners will never comply with, and which therefore is just a money-grab. Personally I suspect it's not that sinister, and merely that the PTO personnel involved in this have little experience on the practitioner side, and don't realize how unrealistic the proposed requirement really is.

"I don't understand why the PTO didn't propose to do like WIPO, viz. continue to let us file pdfs that *we ourselves* create"

Honestly, its just much easier to extract data from the underlying xml in a DOCX file. I cannot even begin to tell you how much of a migraine a PDF files are. So there is nothing nefarious going on, the USPTO is just trying to increase automation.

I'll get a parser up on corepatent.app that will replicate the USPTO's header matches (should be trivial) and identify any issues identified above. This shouldn't be too difficult to implement.

Mike - can you send me the problematic docx files? I'd love to take a look at them and see if I can get the parser to catch these issues.


"Honestly, its just much easier to extract data from the underlying xml in a DOCX file. I cannot even begin to tell you how much of a migraine a PDF files are. So there is nothing nefarious going on, the USPTO is just trying to increase automation."

Simon, if your explanation of the rationale behind the USPTO's proposed rule is correct, then you've confirmed that unlike WIPO, the USPTO doesn't care a whit about how end users are affected. What's paramount is how easy it is for the USPTO to do what the USPTO *thinks* it needs.

I doubt that extracting data is any less important to WIPO than it is to the USPTO, yet WIPO has figured out how to manage with applicant-generated pdfs, with applicants having the option of also submitting documents in docx format.

I do wonder how the $400 amount was settled on.

On our first docx submission (and, for now, our last), EFS reformatted the specification and added three pages and changed the margins, which made a line-by-line comparison quite time-consuming. The PTO had no explanation. I would have no confidence that a PTO-created PDF would accurately convert mathematical formulas, chemical structures, or greek characters.

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