My last post concerned the USPTO wisely backing down from its proposed “voluntary CLE”. This post concerns its ongoing insistence to plow ahead with its “docx filing” requirement.
In late October, at the AIPLA Annual Meeting, then-AIPLA president Patrick Coyne interviewed PTO Director Kathi Vidal. While some of her remarks in response to his questions were covered by IPLaw360, one statement in particular seemed to fly under the radar of that publication as well as the prominent patent blogs.
Specifically, Ms. Vidal was asked about the docx filing program, and she responded that (a) she appreciated AIPLA’s input on the matter, and per the suggestion of AIPLA and others, the PTO had begun to allow the submission of a pdf file along with the docx file, and (b) although that option was originally intended to be available only until January 1, 2023, when failure to file in docx format would incur a $400 fee, the PTO is delaying implementation of that rule until July 1, 2023, and thus the ability to file a pdf file along with the docx file, without financial penalty, will continue until then.
Readers familiar with the USPTO’s docx filing program and its many deficiencies will understand Vidal’s remarks are but one more instance of the PTO’s repeated failure to listen to the community of patent filers and to comprehend the problems with the docx filing requirement that this community has expressed on multiple occasions.
In this particular case, what AIPLA, and others (including yours truly) asked for was not the privilege of being able to submit a pdf document in addition to the docx file, but vice versa: to continue to have applicants submit user-created pdf files as the definitive documents, but to be encouraged to submit docx files in addition to the pdf files, to help the PTO do whatever it is it wanted to do with docx files. This, in fact, is the way people filing PCT applications using WIPO’s ePCT already operate, and it works extremely well.
The primary concern with requiring filing in docx format is that the PTO uses proprietary software to convert the user’s docx document to something else, and it’s THAT something else that will become the official document. Since in many cases it will not be practical, prior to filing, to check this converted form line-by-line to ensure that the conversion did not create errors in the document (e.g. in mathematical formulas), filing in docx opens the door to malpractice suits. Hence it is expected that a significant number of practitioners will continue to file in pdf, and to pass on the $400 fee to their clients. The more cynical among us believe the PTO knows this, and is using this docx requirement as an underhanded way to extort money from the public.
In any event, although more than a month has gone by since Ms. Vidal made her remarks at the AIPLA meeting, no official announcement has come forth from the USPTO regarding delay in the docx requirement. Which is a pity, because as of October 1, the USPTO did not have approval from the Office of Management and Budget (required under the Paperwork Reduction Act) to move forward with its docx program. Since such approval must come three months in advance, the USPTO cannot legally move forward with the docx program on January 1. If a lawsuit is filed against the USPTO to enjoin the docx requirement and imposition of the $400 fee – and I’m aware of at least one individual who is preparing to file such a suit – it is not only likely that and injunction will be granted, and that ultimately the USPTO will lose (just as it lost 15 years ago in the battle over the claims and continuation rules), but the USPTO will wind up with significant egg on its face, as it has been persistently duplicitous in its pursuit of the docx debacle.