The Patent Office is delaying the non-DOCX penalty fees it had said would go into effect at the beginning of 2023.

Family skiing at Nordic Valley, Utah

As part of its “modernization” efforts, the Patent Office has been pushing patent attorneys, agents, and pro se filers to use Patent Center instead of EFS-Web and to file in DOCX format instead of PDF.  I have previously written about some of the problems that has created.  Others have done so in much more detail and volume than me.

The Patent Office is pushing filers to use DOCX format instead of PDF because the Office claims it saves us the time and hassle of converting to PDF and because the Patent Center’s filing software can check DOCX files for common filing problems.

The few times I have tested Patent Center and filed DOCX documents, I have been disappointed.  The system warned me of problems that did not exist.  It never gave helpful feedback.  The most feedback it really gave was to auto-detect that my application had 3 independent claim and 20 claims in total.  I need to know this because it determines what fees apply.  However, two issues:

1. I already knew those numbers.  I usually write those numbers down before filing so that I can check that the Office’s filing system has properly calculated the fees; and
2. When it came time for Patent Center to calculate the fees, it prompted me to input the number claims in my application, rendering the auto-detect from earlier in the submission process seemingly unnecessary.

The biggest problem with the DOCX adoption is that Patent Center creates a PDF from the DOCX file that then becomes the official copy of the application.  That PDF, however, often would be inconsistent with the DOCX file.  For instance, when creating the official PDF, Patent Center frequently changes numbers, variables, and even operators in equations submitted in the original DOCX document.  The burden is on the uploader to check the PDF for consistency with the DOCX.  This is process requiring hours, however, and is not a practical activity when uploading finalized patent documents in an online environment that times out after inactivity.

The Patent Office has continually pushed penalizing applicants who did not include a DOCX file.  The Office was going to begin charging applicants $400 in non-DOCX penalty fees on January 1, 2022.  That was then delayed until January 1, 2023.  Thanks in part to efforts by Ptaaarmigan and a last-minute protest letter signed by several hundred attorneys, the Office has now delayed implementation of the penalty until April 3, 2023.

I suspect we will see a major revision – or at least an announcement of a revision – before April 3 which either allows filers to continue using PDF or withdraws the penalty fees.

Snowbasin in Clouds, Utah

Patent applications possess priority claims to couple them to other patent applications.  This often arises when a non-provisional utility patent application claims priority to a provisional application.  The provisional application is a “temporary” filing but can establish a filing date to which the later-filed non-provisional or “real” patent application claims priority.  If the priority claim is good and valid, then the later-filed non-provisional application is considered to have been effectively filed as of the provisional application’s filing date.

Priority also occurs when a later-filed non-provisional utility application is connected to an earlier-filed non-provisional utility application.  The later-filed app may claim the same subject matter or may present new subject matter.  Filing non-provisional applications in this way builds a “family” of patent applications with parent and child applications.  Provisional applications are often the first applications in such families.

While utility patent applications can be strung together to build these families, design applications are more difficult to incorporate.  A design patent application primarily presents a set of drawings as both the disclosure and the claimed coverage, but utility applications rely on both detailed written description and drawings.

By law, a design patent application cannot claim the benefit of a provisional.  That doesn’t mean, however, that an applicant cannot attempt to claim priority to a provisional application.  An applicant could certainly make a priority claim in the design application.  I have seen instances where the Office technically recognizes it by listing the provisional as a parent in the continuity information section of the Patent Office online portal.  But the priority claim is still wrong and invalid, the Patent Office online system just doesn’t realize it.

37 C.F.R. § 1.78 is clear: (a) An applicant in a nonprovisional application, other than for a design patent, … may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.

MPEP 211 further plainly states: “Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172.  Thus, where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.”

December Snow in Durango

The Patent Office charges fees for receiving and processing patent applications.  It levies filing, search, and examination fees for all non-provisional design patent applications and utility patent applications.  These fees vary depending on whether the applicant is large, small, or micro entity.  The fees fluctuate depending on the structure of the claims.  The Patent Office also charges an application size fee.

Most applicants are aware that the Patent Office charges fees for excess claims.  Excess claims are defined in a few ways.  First, there can be a charge for “multiple dependent claims,” but such claims are written so infrequently that those fees can almost be ignored.  Second, the Patent Office charges for each independent claim in excess of three.  Third, the Patent Office charges for any and all claims in excess of twenty claims.

Patent attorneys are accustomed to drafting only 20 claims in 3 sets, and so applications often do not incur excess claim fees.  Most attorneys remember that when they run over the 3 independent / 20 total claim limit, the application incurs excess claim fees.  It is easy to write more than 20 claims.  If I write more than that for a patent application, then I present them to the client and we consider whether to remove or keep them.  But many applications include only 20 claims.

Patent applications can also incur an “application size fee.”  These are charged when an application has a lot of pages.  While it is relatively easy to present more than 20 claims, applications in excess of 100 pages are much less common.

100 pages is a lot of specification pages for a patent application.  However, it isn’t just the detailed description that counts toward the 100 page limit.  Instead, the Office considers the number of drawing pages (and the number of claim pages, if not included together with the specification).  Applications pushing toward 100 pages in length on the detailed description side often have a correspondingly-large number of drawings which can push them over the hundred-page limit.

Because most applications usually have 20-50 pages, the application size fee can be easy to forget.  If forgotten, the Office will issue a Notice of Missing Parts to correct the error, either by eliminating pages (not likely to happen) or by paying the forgotten application size fee together with any surcharges.

Phoenix Mountain Preserve

When does a patent application require an inventor’s oath or declaration?  Well, almost always.

Only the inventor or inventors of an invention may file for a patent application claiming the inventive subject matter. “A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f). This statute bars the issuance of a patent where the applicant, or identified inventor, did not invent the subject matter being claimed. See In re Verhoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018) (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998); City of Milwaukee v. Activated Sludge, 69 F.2d 577, 587 (7th Cir. 1934) (“When a number of persons make an invention jointly, a valid patent can not be taken out in the name of one of them.”)).

The Application Data Sheet sets forth the inventorship and is presumed to be correct on its face. An oath or declaration must therefore be submitted for each person identified as an inventor. An oath or declaration filed in a patent application must identify that the person making the oath believes the named inventor(s) to be the original and first inventor(s) of the claimed subject matter. This is to ensure that each inventor indicates what he or she believes to be the appropriate inventive entity.

The oath must also state that the signatory acknowledges the duty to disclose to the Patent Office all information known to be material to patentability. Inventorship is typically conception; reduction to practice – drafting someone else’s idea – is not sufficient to be considered an inventor.  See Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993).

So, when a person conceives of an idea, that person becomes an inventor, and that person must sign and file an oath or declaration making certain statements about the duties and facts surrounding invention and the examination of a patent application for the idea.

In some cases, multiple may be inventors. Joint inventorship can happen through close collaboration or because a project develops over time and is added to by inventors completely separate from each other. A joint inventor is a person who:

(1) contribute[s] in some significant manner to the conception or reduction to practice of the invention, (2) make[s] a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do[es] more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Pannu, 155 F.3d at 1351. “When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. § 116. Joint inventors may not apply for a patent other than jointly; neither of them can alone file a patent application. 37 C.F.R. § 1.45(a).

It is prohibited for a joint inventor to receive a patent that doesn’t name the other joint inventor(s); doing so can be a basis for later invalidating the patent if the inventorship is not corrected. Thus, joint inventors must sign their own oath or declaration.

Unfortunately, an original oath or declaration cannot always be obtained. Sometimes, an inventor can’t be reached, or refuses to sign, or has died. That doesn’t a patent app can’t be filed or a patent issued.  Rather, the rules account for these situations and there are mechanisms and procedures to file an application without the required oath or declaration.

An oath or declaration is not required in all continuing applications. Under 35 U.S.C. § 115(g), the requirement for a signed declaration does not apply if the inventor was also named as the inventor in a parent application, to which the subject application is a continuation or division. A properly-signed declaration previously submitted in such a priority application renders the requirement for a dec moot. Nevertheless, it can sometimes be easier to file the declaration from the previous application in the new application, just so that it is of record and the file is clear. And, if the inventorship has changed at all from the prior application, new oaths or declarations must be filed.