DOCX Plan Risks Patent Quality And USPTO Should Reverse ItOriginally published on Law360
Julie Burke, Ph.D.
The U.S. Patent and Trademark Office recently announced it is proceeding with its plan to require applicants to e-file patent applications in the DOCX format.
In comment letters, the IP community explained the USPTO's view is incorrect.3
The DOCX conversion process will introduce technical errors, leading to uncertainty, inaccuracy and inconsistency throughout the patent system.
DOCX is not designed to yield consistent results across platforms — any given DOCX will at least appear different when opened by different word processing programs and often will show substantively different content when moved from one computer system to another.
While all inventors will be affected, DOCX will most severely affect chemists, mathematicians, computer programmers and others who describe their inventions with tables, formulas, Greek letters, subscripts, italics and specialized symbols not consistently identified by optical character recognition systems.4
Alarmed at the prospect of these inaccuracies, patent practitioners alerted the USPTO of actual DOCX conversion errors including the one shown in Figure 1.5
This single error, "0.2" changed to "10.2," illustrates what's at stake.
"One of the major functions of the patent system is the dissemination of technical information… that can be used directly for scientific and experimental purposes," according to the World Intellectual Property Organization.6
Random errors riddling the official record of foundational patent documents will affect not only patent examination, enforcement and litigation processes. DOCX conversion errors will also affect the body of prior art, hindering scientific research advances worldwide.
Why would the agency require a practice that propagates errors? The USPTO promotes DOCX as a smarter interface that will modernize and streamline patent application systems and reduce agency effort.
DOCX enables development of software to perform automated initial reviews on incoming documents for potential problems, such as tallying words in the abstract for compliance with Title 37 of the Code of Federal Regulation, Section 1.72.
Also, the DOCX conversion process permits examiners to copy and paste text between documents.
These perceived efficiencies come at a cost: reduced document integrity. Reduced document integrity runs counter to the U.S. Senate's mandate for patent examination and quality improvement.7
Opting out of the DOCX process also comes at a cost: a $400 penalty per large entity applicant, even though the USPTO's acknowledged actual cost would be $3.15 per document.8
Inventors will shoulder the burden of the office's cost externalization by either paying the surcharge or identifying and petitioning to correct DOCX-generated errors in the official record.
Although the USPTO has been encouraged to avoid improper deposition of records, comply with the Comprehensive Records Schedule9 and improve its internal control of records,10 the DOCX program appears to be a step in the wrong direction. Patent applicants are rightfully wary of any proposal that potentially introduces errors into documents.11
Three IP bar associations, 73 combined practitioners and more than 16 others have voiced opposition to the DOCX proposal.12
Their concerns covered:
- The burden of proofreading their uploaded specification for DOCX-induced errors;13
- Opposition to the DOCX surcharge amounting to more than 20% of the filing fees;14
- Disproportionate impact on individual inventors and startups;15
- Practitioners essentially being required to subscribe to Microsoft Corp. or Adobe Inc. software;16 and
- Issues of professional liability.17
Commenters proposed PDF formats such as PDF/A as "the best and safest for ensuring that no text becomes garbled or otherwise corrupted by the USPTO system."18 PDF/A offers all the same benefits as DOCX, plus consistency across all viewers, without risk of potentially catastrophic content-changing conversions.
The USPTO did not consider these comments in their 2020 final rule notice. Instead, the office stated it "has not received notifications of any issues resulting from the filing of applications in DOCX format."19
I urge USPTO Director Kathi Vidal to apply a simple principle: Documents must not be altered — not by human intervention, not by preprocessing or converting from one form to another, and not by the mere act of copying a document from one computer to another.
This simple principle means the DOCX proposal cannot go forward. Instead, the office should adopt a portable and consistent approach: the text-based PDF form used by U.S. federal courts in the Case Management/Electronic Case Files, or CM/ECF, system.20
Adopting the federal court's process would ensure the exact document an applicant files is the definitive version the USPTO archives and relies on.
The PDF/A variant offers all of the automated review, verification and copy-and-paste advantages the USPTO attributes to DOCX; has been part of most PDF tools for over a decade; and avoids all the disadvantages of DOCX.
I call on the USPTO to maintain integrity of invaluable documents underpinning our patent system by reversing this decision.[^21]
Julie Burke, Ph.D., is the founder of IP Quality Pro LLC. She is a former USPTO Technology Center 1600 quality assurance specialist.
David Boundy at Potomac Law Group PLLC contributed to this article.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
The United States Patent and Trademark Office. "Filing Patent Applications in DOCX Format." 87 Fed. Reg. 25226, 25226-25228 (Apr. 28, 2022), available at https://www.federalregister.gov/documents/2022/04/28/2022-09027/filing-patentapplications-in-docx-format. ↩
The United States Senate. "Patent Examination and Quality Improvement Act of 2022." 2 August 2022, available at https://www.ipwatchdog.com/wpcontent/uploads/2022/08/EHF22425.pdf. ↩
Endnote . Dorothy A. Hauser 6 August 2019. ↩
Seventy-three Patent Practitioners letter. 27 September 2019, available at https://www.uspto.gov/sites/default/files/documents/Comment_Seventy_Three_Patent_Practitioners_092719.pdf. ↩
World Intellectual Property Organization. R&D, Innovation and Patents. Introduction, available at https://www.wipo.int/patent-law/en/developments/research.html. ↩
Endnote . ↩
The United States Patent and Trademark Office. "Setting and Adjusting Patent Fees During Fiscal Year 2020;" Final Rule, 85 Fed. Reg. 46931, 46956 col. 2, Response 45; 46957 col. 2, Response 52; 46958 col. 1, Response 54; 46958 col. 3, Response 60; 46959 col. 1, Response 64 (Aug. 3, 2020) available at https://www.regulations.gov/ document/PTO-P-2018-0031-0057. ↩
Department of Commerce Office of Inspector General. "USPTO Patent Quality Assurance Process" (Final Report No. OIG-11-006-1) 5 November 2010, available at https://www.oig.doc.gov/OIGPublications/OIG-11-006-I.pdf. ↩
Department of Commerce Office of Inspector General. "The U.S. Patent and Trademark Office's Awarding and Administering of Time-and-Materials and Labor-Hour Contracts Needs Improvement. Final Report No. OIG-15-012-A 3 December 2014, available at https://www.oig.doc.gov/OIGPublications/OIG-15-012-A.pdf. ↩
One Hundred Six Patent Practitioners letter. 7 June 2022, available at https://blog.oppedahl.com/wp-content/uploads/2022/06/20220607-letter.pdf. ↩
Endnote . ↩
Endnote . Intellectual Property Owners Association 30 September 2019. ↩
Endnote . American Intellectual Property Law Association 30 September 2019. ↩
Endnote . Judith Szepesi 30 August 2019. ↩
Endnote . D.S. 30 September 2019. ↩
Endnote . James Ryler 29 August 2019. ↩
Endnote . Dekel Patent Ltd 5 August 2019. ↩
Endnote . ↩
United States Courts. "Electronic Filing (CM/ECF)' available at https://www.uscourts.gov/court-records/electronic-filing-cmecf. ↩