What a Difference a Format Makes. 24 Little Bytes
May 5, 2023
Note: This essay is the work of a real and still-alive dinobaby. No smart software involved, just a dumb humanoid.
Lawyer Carl Oppedahl has strong feelings about the Patent Office’s push to shift applications from PDF format to the DOCX format. In his most recent blog post on the subject he considers, “How Successful Have USPTO;s DOCX Training Webinars Been?” His answer, in short, is not very.
Oppendahl recently conducted two webinars for law offices that regularly file clients’ patent applications. He polled his attendees and reports the vast majority of them felt the Patent Office has not done a good job of communicating the pros and cons of DOCX filing. More significant, though, may be the majority of attendees who say they will not or might not submit filings in DOCX in the future, despite the $200 – $400 fee for stubbornly sticking with PDFs. In our experience PDFs are a PITA, so why is there such a strong resistance to change?
I sat through a recording of Oppendahl’s first webinar on the subject, and if you believe his account there are actually some very good reasons. It is all about protecting one’s client. Oh, and protecting oneself from a malpractice claim. That could be worth a few hundred bucks (which one might pass on to the client anyway.) His executive-summary slide specifies:
“DOCX filing puts you more at risk than PDF filing
PDF filing:
*You can protect yourself tomorrow or next month or TYFNIL [ten years from now in litigation].
*The Ack Receipt Message Digest allows you to prove the PDF file you preserved is the same PDF file that was uploaded to the PTO.
*You get an audit trail.
DOCX filing:
*You cannot prove what DOCX file you actually uploaded.
*The PTO throws away the DOCX file you uploaded (D1) and only keeps their manipulated version (D2).
*There is no Ack Receipt Message Digest available to prove the DOCX file you preserved is the same DOCX file that you uploaded to the USPTO.
*The USPTO destroys the audit trail.
*There is an Ack Receipt Message Digest relating to DOCX. It does not match the file you uploaded (D1) so you cannot use it to prove what you filed. It does match the file D2 that became authoritative the instant that you clicked ‘submit,’ so TYFNIL it permits the infringer to prove that you must have clicked ‘submit’ and you agreed that your uploaded DOCX file D1 was not controlling.
*In other words TYFNIL if you try to point to what you say you uploaded, and you try to say that this is what should have issued in the patent the Message Digest will serve to say that you agreed that what you uploaded was irrelevant to what should have issued in the patent. The Message Digest serves to say that you agreed that the patent should issue based on what was in that manipulated version D2.
*In the DOCX filing system, the Message Digest has been repurposed to protect the USPTO and to protect infringers, and no longer protects you, the applicant or practitioner.”
Like I said, strong feelings. For details on each of these points, one really just needs to listen to the first 45 minutes of the webinar, not all one-and-a-half hours. A key point lies in that D1 versus D2 issue. The D2, which submitters are required to verify, is what emerges from the other side of the PTO’s proprietary docx validator software. According to Oppendahl, that software has been proven to introduce errors, like changing a mu to a u or a square root sign to a smiley face for example. For patents that involve formulas or the like, that can be a huge issue. To avoid such errors being set in stone, filers (or their paralegals) must check the submitted document against the new one character by character while the midnight EST deadline looms. Not ideal.
Another important issue is the value of the Ack Receipt Message Digest facilitated by PDFs but not DOCX documents. The technology involves hash functions and is an interesting math tangent if you’re into that kind of thing.
So why is the Patent Office pushing so hard? Apparently it is so they can automate their approval process. Automation is often a good thing, and we understand why they are eager to speed up the process and reduce their backlog. But the Patent Office may be jumping the gun if applicants’ legitimate legal standing is falling through the cracks.
Cynthia Murrell, May 5, 2023
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One Response to “What a Difference a Format Makes. 24 Little Bytes”
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Thank you for your article at http://arnoldit.com/wordpress/2023/05/05/what-a-difference-a-format-makes-24-little-bytes/ .
I’d be grateful if you can correct the spelling of my name “Oppedahl” in three places.