The USPTO continues to present webinars, by now every two days or so, containing pants-on-fire lies about “the DOCX standard” and how safe it supposedly is to file US patent applications according to the USPTO’s DOCX initiative. The USPTO will impose a $400 surcharge on and after June 30, 2023 for those filers who fail to file applications as DOCX files.

Attend either or both of two upcoming webinars to get the other side of the story. Attend either or both of the two webinars to appreciate the professional liability risks of filing in DOCX. Attend either or both of the two webinars to learn how to reduce the professional liability risks.

History. On June 14, 2012, the USPTO presented slides (see slide 7 above) to the Patent Public Advisory Committee (PPAC) openly stating that Microsoft Word would be needed to file US patent applications in the DOCX initiative. By about 2018 the USPTO, without explaining why, quietly stopped saying that Microsoft Word would be required. The USPTO commenced what is now its familiar set of talking points:

• that DOCX “is a standard” (hypertechnically true, but false in any practical sense),
• that any non-Microsoft word processor can be used for DOCX filing of US patent applications (true in the sense that you can probably get a filing date, false in the sense of it actually being tantamount to malpractice to do it with any non-Microsoft word processor), and
• that supposedly it is “safe” to file US patent applications in the USPTO’s DOCX initiative.

The reason for two webinars, rather than just one webinar, is that you may fall into either of two filing paths, each with its own professional liability risks.

Those who use Microsoft Word and who mistakenly think that the use of Microsoft Word makes it safe to file in DOCX. Some practitioners and applicants may recall the PPAC slide decks from 2012, and other USPTO public statements from that era, that came clean with USPTO’s having designed its internal systems for DOCX filing in a way that was tied to the use of Microsoft Word. Those practitioners and applicants might, in 2023, figure that if you want to minimize things going wrong with your DOCX application filing process, using Microsoft Word will surely help.

Some practitioners and applicants who use Microsoft Word will have observed the USPTO’s strained statements in its DOCX web site and recent webinars, laboring to reassure the users of non-Microsoft word processors that supposedly it is perfectly safe for them to file DOCX patent applications despite their failing to use Microsoft Word. Users of Microsoft Word will have figured out that it must actually be riskier to use a non-Microsoft word processor, or otherwise why would the USPTO spend so much time and energy making such strained efforts to deny such risks?

In the face of all of this, practitioners and applicants who use Microsoft Word might figure that because they are doing what the USPTO originally said was the right way to do it, it must be safe, right?

It is not safe. There are many things about DOCX generally, and many things about how the USPTO’s DOCX initiative is designed, that makes it risky to use Microsoft Word to file DOCX US patent applications.

A first one of the upcoming webinars is directed specifically at users of Microsoft Word who might not fully appreciate the risks for them of using Microsoft Word to file DOCX US patent applications.

Those who use a non-Microsoft word processor. Two years ago in one of its Federal Register notices, the USPTO acknowledged that some twenty percent of patent applications that were being filed at that time had been authored in a non-Microsoft word processor. By now the percentage has probably increased, as practitioners and applicants continue to migrate away from the annual-fee costs of Microsoft Office 365 and continue to migrate toward high quality free-of-charge non-Microsoft word processors such as Libre Office and Google Docs.

Given that USPTO designed its internal systems specifically to work with the variant of DOCX that is generated by Microsoft Word, it will be no surprise to users of non-Microsoft word processors that the professional liability risks of filing patent applications in the USPTO’s DOCX initiative are even greater than the risks for those who use Microsoft Word.

A second one of the upcoming webinars is directed specifically at users of non-Microsoft word processors.

What if my time as an attendee is limited? Each webinar is scheduled to last 90 minutes. We recognize that some attendees have only very limited time to attend such a webinar. With this in mind, we will present an executive summary during the initial twenty-five minutes, followed by a detailed discussion for the remaining sixty-five minutes. Those whose time is limited could consider joining the webinar for the first twenty-five minutes and then disconnecting.

What will I learn in these webinars? A first goal of the webinars is to help attendees appreciate the risks that flow from use of the USPTO’s DOCX filing initiative. Many of those risks relate to failures that might get discovered only at litigation time. It would, for example, be important for a practitioner to ensure that the practitioner’s “tail coverage” for malpractice insurance continues through the term of any patent issuing from a patent application that the practitioner filed, and for another six years of statute of limitations for patent litigation on such a patent.

A second goal for the webinars is identifying ways to reduce the immediate and downstream risks for the practitioner by taking precautions in the US patent application filing process. One such precaution is simply to budget for, and pay, the $400 surcharge so that one can file in the trusted PDF format rather than the risky DOCX format. But there are other things the practitioner can do to try to reduce such risks, and the webinars will discuss those other things.

A third goal for the webinars is to engage in mind-reading. The USPTO has blinked three times so far on the starting date for the $400 surcharge (16 months ago, four months ago, and last month). The USPTO has, in private meetings with legacy professional associations, floated various “second filing path” approaches that might be made available in addition to the DOCX filing path, and that might be less risky for the practitioner while still avoiding the need to pay the $400 surcharge. Regrettably, neither the Office nor the legacy professional associations have been open or candid with actual practitioners about the details of the contemplated “second filing path” approaches. The contemplated “second filing path”, as best understood by observers not present at the private meetings, seemed to ignore the existence of the 20% or more of filers who use non-Microsoft word processors.

In the webinars, we will engage in mind-reading, trying to guess what the USPTO might do next in its “second filing path” approaches. We will try to guess whether the USPTO might listen to and pay attention to actual practitioners about these “second filing path” approaches. We will also try to guess whether the USPTO will blink a fourth time on the start date for its $400 surcharge.

Your presenters. Your chief presenter will be Carl Oppedahl, a patent practitioner and member of the EFS-Web and Patentcenter listservs. Guest presenters will address particular issues during the two webinars.

Registration cost? Each webinar is free of cost to register, courtesy of Oppedahl Patent Law Firm LLC.

Will the webinars be recorded? People always ask this. You should simply attend the live webinars! Yes we try to set up recording. Sometimes we fail to get the recording to work properly. Besides, watching a recording of a potentially dry subject like this is probably even more dry than attending the live webinar. Not only that, if you miss the live webinar, you miss the opportunity to ask questions. But yes we will try to record each webinar for later possible viewing.

Sign up for either of both of the upcoming webinars:

• Professional Liability Risks of Filing in DOCX – for users of Microsoft Word. Tuesday, April 18, 2023, 10 AM to 11:30 AM Mountain Time. Executive summary from 10 AM to 10:25 AM, details from 10:25 AM to 11:30 AM. For more information, or to register, click here.
• Professional Liability Risks of Filing in DOCX – for users of non-Microsoft word processors. Wednesday, April 19, 2023, 10AM to 11:30 AM Mountain Time. Executive summary from 10 AM to 10:25 AM, details from 10:25 AM to 11:30 AM. For more information, or to register, click here.