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January 02, 2023


Mike, I will be shocked if the PTO moves ahead with this docx fiasco, because, as Carl explained in detail in this blog post (https://blog.oppedahl.com/?p=8681), the PTO has been lying about docx for years, and as explained in the 117 practitioner letter to which you linked (of which I'm a signatory), the PTO has repeatedly cheated on its admin law obligations.

Bottom line is the PTO has not been up front with the public about docx, ever, "docx" doesn't operate in the way or do what the PTO says it does, and if this goes to court, the PTO will lose (and some people within the PTO will likely look very, very foolish).

If indeed the PTO has a real reason for needing text-based filing, then hopefully the result of this episode will be a *transparent* process in which the PTO explains to the public what its actual needs are and why it thinks those are its need. There are some very smart people, as well as some very computer-savvy people, among the community of inventors and patent practitioners, I'm betting that if the PTO is forthright about this, a solution that's satisfactory to all can be found.

Or it can just save everyone's time and money and buy WIPO's ePCT software, which beats the pants off of EFS/PAIR/PatentCenter.

I think you're overly kind to the PTO on this one - I think they only pulled back at this late date because of the 23 December letter to the Director, spearheaded by David Boundy.
To me, and I think to many others, it's as simple as "whatever it is the applicant files must be the record copy of the application". That to me means that the accepted format for electronic filing must be an internationally accepted standard, which PDF is and DOCX (with or without PTO "validation" - which, of course, is not validation, but rather a rewriting of the application) very definitely is not.
If the PTO wants text, let it ask politely for text and offer us a reason, such as a filing fee reduction, for complying with that request. But the PTO's ham-handed approach to dealing with applicants and their representatives thus far gives me little hope that anything other than the threat of litigation will stop DOCX.

Whew, now the blog gets a reprieve on changing its name to Patent DOCX for a while.

Thank you for bringing attention to this issue. Also David Boundy deserves many thanks for highlighting this and other issues with PTO practices, for example: https://ipwatchdog.com/2022/07/19/study-scarlet-powers-attorney-uspto-rulemaking-part-ii/id=150256/

I hope all these efforts to encourage the PTO to do better are eventually successful.

Echoes of USPTO trying to ram through their ill-conceived rules limiting applicants to 2 continuation applications. The IP profession owes a debt of gratitude to inventor Triantafyllos Tafas for killing that monstrosity in the courts.

PH - entirely agree.

Boundy has provided an encore at Patently-O.

Dear Mike --

> The issues are not in the format itself, which has a number of advantages over the current standard of filing in PDF.

Your technological understanding is not accurate. DOCX is inherently incompatible with the purposes for which the PTO proposes it. We explained those problems in a notice and comment letter in 2019, https://www.uspto.gov/sites/default/files/documents/Comment_Seventy_Three_Patent_Practitioners_092719.pdf Carl Oppedahl wrote an exhaustive explanation of DOCX at https://blog.oppedahl.com/wp-content/uploads/2022/12/20221225-fools-errand-4.pdf

There are two separate problems,

First, DOCX is a very "loose" standard. The DOCX standard allows extensions and subsetting, and leaves many parameters "implementation defined." NO "intake engine" can ever reliably intake DOCX's with the necessary correctness and reproducibility, because DOCX is inherently unstable.

The second problem is the PTO itself. In response to our “Seventy-Three Practitioners” letter, the PTO rewrote comment after comment. For the really hard comments, the PTO just skipped them. It's a familiar pattern—in rulemaking, the PTO rewrites many comments, and omits answering many more, and simply lies to claim exemptions from various laws and oversight proceedings.

Another recent example is the CLE rule, a rule by the PTO's chief ethics officer. The legal deficiencies (including several overt lies) are outlined in two of the public comment letters, https://www.uspto.gov/sites/default/files/documents/Comment_CLE_Guidelines_Boundy.pdf and https://www.uspto.gov/sites/default/files/documents/AIPLA_Letter_to_USPTO_on_CLE_Guidance_010721_FINAL.pdf

Even this week's notice rescinding the CLE rule has several overt lies, directed to avoiding work the PTO would otherwise have to do. (Even rescinding a rule has procedural requirements. They’re pretty minimal, but the PTO (with the signoff of OED) lied to get out of them. Apparently lying is such an ingrained habit that the PTO knows no other way to do business.)

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