Signon letter re DOCX -- please sign

[David Boundy]

Dear Colleagues --

Item 1--please sign a letter.  the DOCX rule and a recent revision to MPEP Chapter 800 to expand restriction practice are both up for review at OMB.  With help from Carl, Krista Jacobsen, and others, here's the letter for your signon (I'm going to tweak it a bit to focus more on Executive Order 12866 -- the letter will be evolving a bit on legal issues, but it's pretty much cooked for facts -- I hope): 

        https://drive.google.com/file/d/1wtdtN-1RNc8a_RkZGhqAset04aFFotJT/view?usp=share_link

Signup list here:

         https://docs.google.com/spreadsheets/d/1BsWuckDOBb_2VVqAMTOV2dCqbpaJdD8IoJsVKOwij9M/edit?usp=sharing

Item 2--please join PTAAARMIGAN (Patent and Trademark Attorneys Agents and Applicants for Restoration and Maintenance of Integrity in Government), an advocacy organization that needs you.   The signup list is at:

          https://ptaaarmigan.org/join-now-2

     

David Boundy | Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

dbo...@potomaclaw.com | www.potomaclaw.com

Articles at http://ssrn.com/author=2936470

Click here to add me to your contacts.

[Krista Jacobsen]

Hi David,

Thank you for finalizing and posting for signatures. I am (obviously) signing.

I noticed what I think are a few typos:

On p. 6 below the excerpt from the yearlong study:

"The yearlong study says not a single word about DOCX—the PTO’s conclusion
in the Final Rule is entirely unsupported., either to one of the signatories of this
letter asked for it though informal channels, four times."

I think something was inadvertently deleted, or something was inadvertently left in, or something was typed incorrectly. There is a ".," and I think "either to" should be "even though."

I am also not sure why this sentence on that same page ends in a colon: "The first three sentences of each of the four references to the “yearlong study” is [--> are?] substantially identical:" Is the colon a typo, or did you intend to copy in the first three sentences below it?

For n.28, maybe add a "See, e.g.," because there is only one citation provided as opposed to "several."

Again, thank you. I know this took a TON of time to prepare. You are a rock star.

Best regards,

Krista

On Tue, Mar 28, 2023 at 8:49 AM Daniel Feigelson via Patentcenter <patent...@oppedahl-lists.com> wrote:

David, thanks for putting this together, I'm signing.

typo: page 5, last paragraph (not footnote), penultimate line, there's a colon where there should be quotation marks.

Dan

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-------------------------------------------

Krista S. Jacobsen

Attorney and Counselor at Law

Jacobsen IP Law

kri...@jacobseniplaw.com

T:  408.455.5539

www.jacobseniplaw.com

[rnei...@neifeld.com]

"buggy software" is supported be the Doctor's blog post, admitting to 18 revisions to it's DOCX application conversion software.  You can drop a cite to the relevant Blog post.

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[Gerry Peters]

David -- Letter signed and PTAAARMIGAN joined. Thank you so much
for your extremely well-written letter and for all of your hard work on
behalf of practitioners and applicants!
---Gerry

Gerry Peters
U.S. Patent Agent & Japanese Translator

JTT K.K. (OSAKA & TOKYO JAPAN)
JTT PATENT SERVICES, LLC (NH USA)
JTT TRANSLATION SERVICES, LLC (NH USA)
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>> BEGIN MSG ID
>> CAJwugqFadCfy=WNPYj6bguf__qrHJvb...@mail.gmail.com <<

Date: Tue, 28 Mar 2023 11:17:50 -0400
From: David Boundy via Efs-web <efs...@oppedahl-lists.com>
To: users of Patentcenter <patent...@oppedahl-lists.com>, for users
of EFS-Web and patent practitioners generally
<EFS...@oppedahl-lists.com>, pa...@oppedahl-lists.com, "Rick's
List-Serve (pate...@googlegroups.com)" <pate...@googlegroups.com>
Cc: David Boundy <DavidBo...@gmail.com> Subject: [Efs-web-L] Signon
letter re DOCX -- please sign

Dear Colleagues --

*Item 1--please sign a letter.* the DOCX rule and a recent revision to

MPEP Chapter 800 to expand restriction practice are both up for review
at OMB. With help from Carl, Krista Jacobsen, and others, here's the
letter for your signon (I'm going to tweak it a bit to focus more on
Executive Order 12866 -- the letter will be evolving a bit on legal
issues, but it's pretty much cooked for facts -- I hope):

https://drive.google.com/file/d/1wtdtN-1RNc8a_RkZGhqAset04aFFotJT/view?usp=share_link
Signup list here:

https://docs.google.com/spreadsheets/d/1BsWuckDOBb_2VVqAMTOV2dCqbpaJdD8IoJsVKOwij9M/edit?usp=sharing

*Item 2--please join PTAAARMIGAN* (Patent and Trademark Attorneys Agents

and Applicants for Restoration and Maintenance of Integrity in
Government), an advocacy organization that needs you. The signup list
is at: https://ptaaarmigan.org/join-now-2

<https://www.iam-media.com/strategy300/individuals/david-boundy>

*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA 02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dbo...@potomaclaw.com <dbo...@potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

Articles at http://ssrn.com/author=2936470
<http://ssrn.com/author=2936470>
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>> CAJwugqFadCfy=WNPYj6bguf__qrHJvb...@mail.gmail.com <<

[Rick Neifeld]

David - I suggest the following addition:

Immediately above the paragraph beginning "The yearlong study says not a single word about DOCX—the"


add the following:


"
    In fact, the yearlong study does not state that the order or the content of PDF documents filed in U.S. patent applications could not be preserved.
    Further, the PTO's assertion that searchable text data is available in "some PDFs," is a half-truth, because it fails to identify the additional fact that "some PDFs," filed in patent applications in the PTO do not contain text, and consequently that no "searchable text" can result from "processing" (meaning using text in the PDF and not meaning an optical character recognition process) of those PDFs. The fact that the yearlong study found that  only some PDF documents filed in patent application could be processed to "searchable text" is a result of the PTO's filing system allowing the filing of non text PDFs, and is unrelated to the PTO's discussion of the "feasibility of processing text in PDF documents." (Italics added for emphasis.)
    All the PTO need do to to exclude non text PDF filings, is to require all PDF documents filed in patent applications to include text, to avoid a $400 surcharge. And the PTO has statutory authority to do that, see 35 USC 41(h), authorizing a $400 surcharge for application filings not in "electronic means as prescribed by the Director." And that requirement would cost the PTO nothing. 
"

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rnei...@neifeld.com
Web: https://neifeld.com/
This is a confidential communication of counsel. If you are not the intended recipient, delete this email and notify the sender that you did so.

[Rick Neifeld]

David - I suggest revising

"representation to the public and to OMB: PDF is the “right approach:”"

to read

"representation to the public and to OMB: Instead, the yearlong study states that PDF is the “right approach:”

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rnei...@neifeld.com
Web: https://neifeld.com/
This is a confidential communication of counsel. If you are not the intended recipient, delete this email and notify the sender that you did so.

[Rick Neifeld]

David - You have 5 bullet points on pages 5 and 6.  The last bullet point ends with "This stop-start-stop-start has forced the public to absorb transition costs multiple
times, none of which are captured in its Supporting Statement."

I suggest you supplement this bullet point adding after the sentence quoted above:

"
Furthermore, the notices of delay substantively changed the legal effect of the Final Rule, in effect changing the rule, twice.  First, the notices temporarily allowed the filing of a PDF with a DOCX filing, allowing the PDF to be an authoritative copy in case the PTO's data derived from the DOCX version differed from the PDF filed by the applicant. Second, the notices then changed the authoritative document to be the DOCX file the applicant filed in the PTO, but indicated that the PTO would discard the authoritative document one year after its filing (by stating it would follow the practice used for paper filings that the PTO scans to pdf, which is to discard the paper filings one year after their filing.)  The PTO provided no notice and comment on either change to the final rule. Clearly the change in the authoritative document and the discarding of that document one year after its filing are substantive legal changes to applicants rights, affect costs, and require notice and comment.
"

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rnei...@neifeld.com
Web: https://neifeld.com/
This is a confidential communication of counsel. If you are not the intended recipient, delete this email and notify the sender that you did so.

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[David Boundy]

Dear Colleagues --

This is the second-to-last letter on DOCX -- the PTO admitted the relevant facts (the PTO admits the cost to the public is $100 MILLION per year, for their savings of $800K -- 130-to-1), now it's just getting an order from OMB to put this to bed.  This is basically the same way we killed the continuations-and-claims rule, the appeal rule, and IDS rule -- the PTO skipped necessary procedural steps during notice-and-comment, then went final, then someone at OMB picked up the phone and told PTO they had to follow the law before they put the rule into effect.  All we need is some comment letters explaining the unreasonable cost-benefit.

Item 1--please sign a letter.  The DOCX rule is up for review at OMB.  Here's the letter for your signon.  I just finished a first draft and it's due next MOnday, so it's going to evolve a bit more for a few more days.  (If you are a stickler for signing only final versions, wait til Friday.)   If you want a Word copy to make edits, let me know and I'll send it to you.: 

       https://drive.google.com/file/d/1oYTRwwv15yxeXOFsD5fwwHjUeJQqk-li/view?usp=sharing

Signup list here:

       https://docs.google.com/spreadsheets/d/1Nr1S8biYcgckK5uqOGF4MlXo7vrDrrjKZ_P5kW9z-Mg/edit?usp=sharing

Item 2 -- write your own letter.  Carl, this means you.  The PTO's request for comment is here -- see the green box in the upper right corner?  Though this round is nominally directed to the PTO, the actual audience for this letter is OMB, under the Paperwork Reduction Act.  The key thing to explain to OMB is that the cost-benefit balance is totally out of whack.  The key provisions of law are in the letter linked above.  The key thing here is that this is the last opportunity to get evidence into the record.  I have assembled the things we sent to Seidel/Holcombe this spring; if you have a nice paper on "Fool's Errand that is DOCX" or anything similar, this is your chance to get it into the record.

       https://www.federalregister.gov/documents/2023/06/06/2023-11913/agency-information-collection-activities-submission-to-the-office-of-management-and-budget-omb-for

Item 3 -- please join PTAAARMIGAN (Patent and Trademark Attorneys Agents and Applicants for Restoration and Maintenance of Integrity in Government), an advocacy organization that needs you.   The signup list is at:

          https://ptaaarmigan.org/join-now-2

--

[David Boundy]

Try again -- hopefully with right links this time

Dear Colleagues --

This is the second-to-last letter on DOCX -- the PTO admitted the relevant facts (the PTO admits the cost to the public is $100 MILLION per year, for their savings of $800K -- 130-to-1), now it's just getting an order from OMB to put this to bed.  This is basically the same way we killed the continuations-and-claims rule, the appeal rule, and IDS rule -- the PTO skipped necessary procedural steps during notice-and-comment, then went final, then someone at OMB picked up the phone and told PTO they had to follow the law before they put the rule into effect.  All we need is some comment letters explaining the unreasonable cost-benefit.

Item 1--please sign a letter.  The DOCX rule is up for review at OMB.  Here's the letter for your signon.  I just finished a first draft and it's due next MOnday, so it's going to evolve a bit more for a few more days.  (If you are a stickler for signing only final versions, wait til Friday.)   If you want a Word copy to make edits, let me know and I'll send it to you.: 

       https://drive.google.com/file/d/1oYTRwwv15yxeXOFsD5fwwHjUeJQqk-li/view?usp=sharing

Signup list here:

       https://docs.google.com/spreadsheets/d/1Nr1S8biYcgckK5uqOGF4MlXo7vrDrrjKZ_P5kW9z-Mg/edit?usp=sharing

Item 2 -- write your own letter.  Carl, this means you.  The PTO's request for comment is here -- see the green box in the upper right corner?  Though this round is nominally directed to the PTO, the actual audience for this letter is OMB, under the Paperwork Reduction Act.  The key thing to explain to OMB is that the cost-benefit balance is totally out of whack.  The key provisions of law are in the letter linked above.  The key thing here is that this is the last opportunity to get evidence into the record.  I have assembled the things we sent to Seidel/Holcombe this spring; if you have a nice paper on "Fool's Errand that is DOCX" or anything similar, this is your chance to get it into the record.

       https://www.federalregister.gov/documents/2023/06/06/2023-11913/agency-information-collection-activities-submission-to-the-office-of-management-and-budget-omb-for

Item 3 -- please join PTAAARMIGAN (Patent and Trademark Attorneys Agents and Applicants for Restoration and Maintenance of Integrity in Government), an advocacy organization that needs you.   The signup list is at:

          https://ptaaarmigan.org/join-now-2

[David Boundy]

Dear Colleagues --

With help from several of you (especially Rich Straussman), updated.   I just got loved bombed by client, so I will have near zero time to look at this again.

Item 1--please sign a letter.  Here's the letter for your signon -- please sign by noon Monday.

       https://drive.google.com/file/d/1oYTRwwv15yxeXOFsD5fwwHjUeJQqk-li/view?usp=sharing

Signup list here:

       https://docs.google.com/spreadsheets/d/1Nr1S8biYcgckK5uqOGF4MlXo7vrDrrjKZ_P5kW9z-Mg/edit?usp=sharing

Item 2 -- write your own letter.  Carl, this means you.  The PTO's request for comment is here https://www.federalregister.gov/documents/2023/06/06/2023-11913/agency-information-collection-activities-submission-to-the-office-of-management-and-budget-omb-for  -- see the green box in the upper right corner?  Though this round is nominally directed to the PTO, the actual audience for this letter is OMB, under the Paperwork Reduction Act.  The key thing to explain to OMB is that the cost-benefit balance is totally out of whack.  The key provisions of law are in the letter linked above.  This is the last opportunity to get evidence into the record.  I have assembled the things we sent to Seidel/Holcombe this spring; if you have a nice paper on "Fool's Errand that is DOCX" or anything similar, this is your chance to get it into the record.     

Item 3 -- please join PTAAARMIGAN (Patent and Trademark Attorneys Agents and Applicants for Restoration and Maintenance of Integrity in Government), an advocacy organization that needs you.   The signup list is at:

          https://ptaaarmigan.org/join-now-2

Thank you

--

[Gerry Peters]

Dear David and all who contributed to most recent DOCX signon letter:

Thank you very much for all your hard work producing this
excellent letter which summarizes the situation extremely well.

Thank you also for making it so easy for the rest of us to simply add
our names to the signatories!

Definitely let us know if/when you need others to do their part,

---Gerry

Gerry Peters
U.S. Patent Agent & Japanese Translator

JTT K.K. (OSAKA & TOKYO JAPAN)
JTT PATENT SERVICES, LLC (NH USA)
JTT TRANSLATION SERVICES, LLC (NH USA)
--------------------------------------------------
TEL +1 206 203 5010 EMAIL in...@jttpatent.com
FAX +1 206 203 5020 WEB www.jttpatent.com

>> BEGIN MSG ID CAJwugqFCns4LYmAAH5yTkp_CvqDhc31ciw6Gy40c8+g
>> +dOa...@mail.gmail.com <<

Date: Tue, 1 Aug 2023 14:34:02 -0400
From: David Boundy <DavidBo...@gmail.com>
To: Patentcenter <patent...@oppedahl-lists.com>, for users of

EFS-Web and patent practitioners generally

<EFS...@oppedahl-lists.com>, for users of PAIR
<pa...@oppedahl-lists.com>, "Rick's List-Serve
(pate...@googlegroups.com)" <pate...@googlegroups.com> Subject:
Fwd: Signon letter re DOCX -- please sign this week

Dear Colleagues --

With help from several of you (especially Rich Straussman), updated. I
just got loved bombed by client, so I will have near zero time to look
at this again.

*Item 1--please sign a letter.* Here's the letter for your signon --

please sign by noon Monday.

https://drive.google.com/file/d/1oYTRwwv15yxeXOFsD5fwwHjUeJQqk-li/view?usp=sharing
Signup list here:

https://docs.google.com/spreadsheets/d/1Nr1S8biYcgckK5uqOGF4MlXo7vrDrrjKZ_P5kW9z-Mg/edit?usp=sharing

*Item 2 -- write your own letter. Carl, this means you. *The PTO's

request for comment is here
https://www.federalregister.gov/documents/2023/06/06/2023-11913/agency-information-collection-activities-submission-to-the-office-of-management-and-budget-omb-for
-- see the green box in the upper right corner? Though this round is
nominally directed to the PTO, the actual audience for this letter is
OMB, under the Paperwork Reduction Act. The key thing to explain to
OMB is that the cost-benefit balance is totally out of whack. The key
provisions of law are in the letter linked above. This is the last
opportunity to get evidence into the record. I have assembled the
things we sent to Seidel/Holcombe this spring; if you have a nice paper
on "Fool's Errand that is DOCX" or anything similar, this is your
chance to get it into the record.

*Item 3 -- please join PTAAARMIGAN* (Patent and Trademark Attorneys

Agents and Applicants for Restoration and Maintenance of Integrity in
Government), an advocacy organization that needs you. The signup list
is at: https://ptaaarmigan.org/join-now-2


Thank you

--

<https://www.iam-media.com/strategy300/individuals/david-boundy>

*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA 02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dbo...@potomaclaw.com <dbo...@potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

Articles at http://ssrn.com/author=2936470
<http://ssrn.com/author=2936470>
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Click here to add me to your contacts.

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[David Boundy]

Dear Gerry -- Thank you.  The biggest thing you can do is pass this on to your colleagues, your firm partners, etc.  We've got 70 signatures -- I'd like to be over 100 by end of weekend, letter due Monday.

Please sign a letter.  The first paragraph explains the problem, so I won't say much here....:   I got two urgent paying-work projects, so I will not be editing this significantly.

       https://drive.google.com/file/d/1oYTRwwv15yxeXOFsD5fwwHjUeJQqk-li/view?usp=sharing

Signup list here:

       https://docs.google.com/spreadsheets/d/1Nr1S8biYcgckK5uqOGF4MlXo7vrDrrjKZ_P5kW9z-Mg/edit?usp=sharing

--

     

David Boundy | Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

dbo...@potomaclaw.com | www.potomaclaw.com

Articles at http://ssrn.com/author=2936470

[David Boundy]

Dear Colleagues --

We're at 100 signatures!  Letter due Monday, I will cut off signatures at 3PM (eastern) on Monday.

Ron Katznelson gave me some markup, and I pasted in some block quotes from the Federal Register notices.  (The client that said "I need a patent application lickety-split" can't give me the information I need.  Good grief.)  I hope for one more exhibit from PB.  Other than that exhibit, I expect no more material changes -- maybe one more top-to-bottom read, and kill some redundancy, but this is close enough that there will be no more surprise changes.

       https://drive.google.com/file/d/1oYTRwwv15yxeXOFsD5fwwHjUeJQqk-li/view?usp=sharing

Signup list here:

       https://docs.google.com/spreadsheets/d/1Nr1S8biYcgckK5uqOGF4MlXo7vrDrrjKZ_P5kW9z-Mg/edit?usp=sharing

 

Please pass this on to your colleagues both within your firm and friends elsewhere.  This has a very high chance of working -- this is the same posture in which we killed the appeal rule in 2009, the continuations and claims and IDS and Markush rules in 2010, and the CLE rule in 2021.  The Paperwork Reduction Act has teeth -- and the PTO has been extremely generous is setting up our case.

Thanks

--