Leveraging Text (DOCX)

Treat DOCX as "authoritative" -- bad idea made worse

The PTO's proposal of June 2 (86 Fed. Reg. 29571) to treat a DOCX as "defintive" doesn't solve the problem; it makes it worse. It proceeds from a misunderstanding of technology, and a misdiagnosis of the problem.

The DOCX format is not designed to provide the portability, uniformity, or interoperability that is essential to legal documents. As many letters to the PTO have explained (see, for example, https://www.uspto.gov/sites/default/files/documents/Comment_Seventy_Three_Patent_Practitioners_092719.pdf ) , DOCX is designed to ensure that the very same bits of a DOCX file will appear differently on different computers. DOCX is designed as an editing format, not an archival or "portable" format. The very same bits look differently when displayed in two different versions of MS Word on two different Windows computers, in MS Word on a Mac, in LibreOffice, in Word Perfect, in Google Docs. The statement "the USPTO now considers the DOCX document filed by the applicant to be the authoritative document" is an absurdity. There is no authoritative or reproducible standard for the rendering of a DOCX Standards ECMA-376 and ISO/IEC 29500 do not precisely specify the behavior of computer software that processes documents stored in DOCX form. The standards leave many choices as "implementation dependent." The standard documents themselves discuss examples of how different software may treat the same DOCX file differently. Many of those who have written comment letters to the PTO have observed cases where those differences could be the difference between a valuable patent application and a nonviable one. Characters and entire paragraphs drop out. Equations and chemical formulas change.

These are not "bugs." The problem is that different pieces of software have different and conflicting definitions of "correct." That is by design. No one of them is "authoritative."

The PTO has never disputed the problems or their catastrophic effect. Instead, in the August 2020 response to comments, 85 Fed. Reg. 46932, the PTO repeatedly reframed the comments to evade answering any comment that raised this issue.

The PTO's May 25 blog post contains the following paragraph, continuing the pattern of misdirection and evasion:

DOCX is a word-processing file format supported by many popular applications, such as Microsoft Word, Google Docs, and LibreOffice. As an open standard format, DOCX offers a safe and stable basis for authoring and processing intellectual property documents. …

No one disputes that DOCX is supported by many popular applications. The issue is that DOCX does not provide portability, uniformity or interoperability among those applications. The PTO is quite transparent in its effort to divert attention from the relevant issue: "open," "safe," and "stable" are entirely irrelevant. The PTO is also transparent in avoiding the issue that matters, portability. "Portability" is why every other document filing system at every federal and state court, and every other nation's patent office we know of, accepts and relies on text-based PDF submissions. That is why none (at least none that I know of, after some research) accept DOCX. The PTO has never explained any benefit to itself or to the public in becoming the single exception. At every turn, the PTO has changed the question or ignored the issue. Once, that's normal human communiation. The June 2 Federal Register notice now makes it now obvious that the PTO is entirely disingenuous.

The PTO's May 25 blog post continues:

Additionally, based on what we've heard from our customers, we are adopting the submitted DOCX files as the authoritative document, otherwise referred to as the source or evidentiary copy (a Federal Register notice on this announcement is forthcoming). This will simplify the filing process, allowing the applicant to only review the DOCX files before submission rather than reviewing the USPTO-generated PDF version.

There is no such thing as "authoritative" for a DOCX file. The standards do not specify any particular software as an authoritative, do not specify a reference implementation, nor do they define the output of any particular software as authoritative. The PTO's statement that "we are adopting the submitted DOCX files as the authoritative document" is as meaningless as saying "Schrödinger's cat is authoritative," or asking "What's the sum of 20 + x?" All three are indeterminate and unknowable.

The PTO's June 2 Federal Register notice reads as follows:

The source or evidentiary copy of the application is the version submitted to the USPTO by the applicant in one of the following formats: paper, DOCX, or PDF when not accompanied by a DOCX version of the same. Applicants should not submit PDF versions they created when filing an application in DOCX, as they are unnecessary. If the applicant submits documents in DOCX along with PDF versions they created (not the auto-generated PDFs created by the USPTO), then the DOCX version will still be considered the source or evidentiary copy, and the applicant will be required to pay the non-DOCX surcharge fee.

The PTO's statement that the DOCX is "unnecessary" is simply a flat falsehood. The June 2 notice continues:

Applicants can rely on the DOCX version as the source or evidentiary copy in order to make any corrections to the record when any discrepancies are identified between the source or evidentiary copy and the documents as converted by the USPTO. Accordingly, during the filing process, applicants will be advised to review the DOCX files before submission rather than reviewing the USPTO-generated PDF version, as set forth in the August 3, 2020, final rule.

Again, the PTO misses the point. "Reviewing the DOCX file before submission" necessarily happens on the applicant's computer. There's no guarantee (and no way to guarantee) that the PTO's computers will view the file the same way.

The June 2 notice continues:

However, applicants are advised to check the USPTO-generated versions as soon as practicable for any discrepancies or errors. Any discrepancies or errors that occur as a result of filing an application in DOCX format should be promptly brought to the attention of the USPTO.

What would it this mean? "Bringing to attention"—when the applicant was unable to include evidence of the rendering of a DOCX on the applicant's computer—is not a meaningful opportunity for correction.

The whole idea is designed to fail. The whole idea reflects incorrect understanding of technology.  The fact that this has gone on this long is designed to ensure distrust by the patent bar.




10 votes
11 up votes
1 down votes
Idea No. 12