Reliable Software Matters for Cyber Security and for IP Security: A Warning About the USPTO's Rush to Change

I'm worried about what's happening with the USPTO's software systems. The software that manages the nation's patents and patent applications is critically important. But on Nov. 8, a fully functional, working system (the Electronic Filing System, EFS-Web) will be shut down and all patent filers and patent practitioners will be forced to use the new Patent Center system. Patent practitioners who keep track of their work with the Private PAIR system will also have that shut down on Nov. 8, with no option but to use the Patent Center. Unfortunately, the Patent Center is loaded with bugs and various defects, some of which could jeopardize a patent application during filing or prosecution, and some of which make life much harder on patent workers. Members of the National Association of Patent Practitioners and others have been pushing back, but the USPTO seems to be set on moving to the Patent Center on Nov 8 and terminating EFS-Web and Private PAIR. They are also set on moving away from the stable standard of PDF documents for filings in favor of the unstable, unreliable DOCX standard which could damage the IP rights of many patent filers. That major change is scheduled for Jan. 24, 2024, in spite of vocal and well reasoned opposition from the IP community.

It's painful to speak out against this because the USPTO does some of the most important work imaginable in strengthening innovation and our economy and is filled with great people. Indeed, I just spoke this week with some USPTO officials about my concerns and was grateful for their kind attention and sympathy, and believe that they will strive to help. Nevertheless, something has gone awry with the USPTO's software plans and I must say something.

What follows is the letter I just submitted to the Inspector General via https://www.govcomhotline.com/DOC1 to express my concerns. I'm also proud to be among the signers of both of the detailed complaints that were recently published by one of the nation's most knowledgeable and experienced patent attorneys, David Boundy, as cited in my letter (see these vital documents at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4597405 and https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4616069):

Oct. 31, 2023

Peg Gustafson, Inspector General

Dept. of Commerce

Washington, D.C.

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Re: USPTO Rush to Implement Defective Software (Patent Center Platform and DOCX System)

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Dear Inspector General Gustafson:

As a US patent agent, inventor, and consultant helping many corporations to protect their IP rights, I am deeply worried about the USPTO’s rush to shut down the effective and fully functional Electronic Filing System (EFS) on Nov. 8, forcing all IP filers to use the incomplete and buggy Patent Center System. The system is riddled with problems that will impose high economic costs on users and may jeopardize the integrity of the filing process, possibly destroying the value of some patent applications. This is not hyperbole, but a genuine concern laid out in detail in data-intensive reports that have been provided to the USPTO but seem to have been downplayed or ignored. For documentation on the problems of the Patent Center system, see the paper published at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4597405 by David Boundy, signed by 137 patent professionals, Oct. 9, 2023.

In addition to the pending setback on Nov. 8, the USPTO continues to push for a new but defective document standard instead of the tried-and-true standard of PDF documents. Due to significant resistance from the IP community, the USPTO has successively delayed its proposed adoption of DOCX as the default document format required for filings to the USPTO. But the growing reasons behind the pushback continue to be downplayed, and on Jan. 24, 2023, the USPTO will formally switch to the DOCX default and charge an additional $400 or $200 for those wishing to file a patent application with the security that a PDF document provides.

The problem is that DOCX is not a reliable system but gives different results based on the computer system being used and the frequently changing version of the proprietary software used to receive and process the document. Most troubling is that a DOCX submission can result in loss of information and, as implemented by the USPTO, the original submission is lost, leaving no lasting, verifiable record of the information that the filer submitted. An equation may be jumbled, a description garbled, and the value of the future patent destroyed, with little or no recourse. For extensive documentation on the problems of the DOCX system, see the paper published at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4616069 by David Boundy, signed by123 patent professionals, Oct. 23, 2023.

Would you please ask the USPTO to explain their hazardous course of action that appears to be in defiance of their duty? Among my many concerns are these points:

• How can the USPTO justify the billions of dollars of costs and loss that it threatens to impose on innovators, inventors, and IP professionals with the new but buggy systems associated with the Patent Center and DOCX? The disproportionate costs shifted to the public may be in violation of 5 CFR § 1320.5(d)(1)(iii). Other legal issues to consider here may include 44 U.S.C. § 3504(a)(1)(B)(vi), (c)(2), (h)(1)(A), relating to appropriate information technology and 44 U.S.C. § 3502(2)(E) on the “completing and reviewing” burden of the information collection. The USPTO also has not sought clearance for the change to the Patent Center under the Paperwork Reduction Act, nor sought review under Executive Order 12866, nor made small entity accommodation under § 3506(c)(3)(C).
• Why has the USPTO apparently been unresponsive to a FOIA request for information regarding its push for DOCX? See their massive redaction of requested emails in pages 43-52 of the document at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4616069.
• Can the USPTO offer any evidence that the Patent Center has really resolved the bugs and defects raised in the documentation provided by Mr. Boundy? Can it respond to evidence that the DOCX system may lose or mangle information in patent filings?
• Finally, given the rush to implement poorly debugged and inadequately tested software systems, can we trust that the new software systems are adequately protected from hacking? This is a risk that may require more time and testing. The dire weaknesses we see in terms of reliability and basic functionality raise legitimate questions about the ability of these new systems to secure the USPTO’s treasure trove of scientific and business information from foreign and cyber criminals.

Reliable software is needed for an effective and secure patent system. The misrepresentations and the inexplicable rush of the USPTO to jump to new, untried systems have shaken my confidence in their software approach, though I respect much of what this organization has achieved and continues to do to secure and protect IP rights. However, given the severe problems in the new proposed software systems, I urge that high scrutiny be imposed. The USPTO should be required to comply with legal requirements to avoid unwarranted and potentially harmful changes to their systems that could adversely affect many businesses, inventors, and IP practitioners.

Sincerely,

Jeffrey Dean Lindsay, Ph.D.

Reg. No. 41,155 (patent agent)

What can you do? Some possibilities:

• Join the National Association of Patent Practitioners at https://www.napp.org/ (if you are a patent practitioner) and stay informed. I am very pleased with NAPP and proud to be a member. Then join the email lists that David Boundy, Carl Oppedahl, and others are using to collect and share information the issues raised here.
• Write your own letter to the Inspector General.
• Contact your Congressman and ask for help in resisting the rush to dangerous software for the USPTO. I'm very grateful to my Congressman, Rep. Mike Ellis of Wisconsin's Eighth Congressional District, who listened to my concerns yesterday at the China IP Road Show in Green Bay that he organized and again today in his office in De Pere, Wisconsin.
• Speak out on social media.

There's just a few days left before the USPTO pulls the plug on Nov. 8 for the EFS-Web and Private PAIR systems, and just a few weeks before the dangerous DOCX standard is enforced. Your voice could make a valuable difference.

Here are some related resources:

• The AIPLA (American Intellectual Property Law Association) has warned that the DOCX system is inadequate and potentially harmful to some. See their letter to the USPTO at https://www.aipla.org/docs/default-source/advocacy/aipla-comments-omb-information-collection-102723-final_signed.pdf. Also see a Nov. 1, 2023 letter signed by 82 patent practitioners (myself included) at https://ssrn.com/abstract=4620375 discussing the USPTO's misrepresentation of AIPLA and adding other new facts in addition to the two papers mentioned in my letter above.
• Letter on the US Patent Center to USPTO Director Kathi Vidal by 178 Members of the Patent Center Listserv, Sept. 29, 2023, by Carl Oppedahl on behalf of 178 patent practitioners (myself included). The PDF letter is at https://blog.oppedahl.com/wp-content/uploads/2023/09/20230929-letter.pdf. An HTML version with active links is at https://blog.oppedahl.com/your-chance-to-suggest-improvements-to-a-letter-to-director-vidal/. This documents numerous unresolved bugs in the Patent Center and clearly demonstrates that great harm may be done by the unjustified shut down of our existing systems on Nov. 8.
• Carl Oppedahl's blog, Ant-like Persistence at https://blog.oppedahl.com/, has been a key source of information about the USPTO's plans and statements. In his post at https://blog.oppedahl.com/aipla-again-asks-uspto-to-postpone-the-shutdown-of-pair-and-efs-web/, Carl alerted readers today to AIPLA's letter mentioned above. Especially important reading is his post on an October 18th meeting with USPTO leaders at https://blog.oppedahl.com/the-in-person-meeting-at-the-uspto-on-october-18-about-patent-center/. Their behavior (or possibly just one VIP's behavior) strikes me as problematic, but perhaps not as problematic as the obfuscation evidence in the heavily redacted documents filed in response to a FOIA request, as descried in Appendix 12 of the letter on the DOCX system at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4616069. Finally, be sure to read Carl's incisive post, "The Fool’s Errand That Is DOCX" at https://blog.oppedahl.com/the-fools-errand-that-is-docx/. Carl really led the way in researching and exposing the many problems of DOCX for patent documents. Many thanks! Now it's time for the rest of the IP community to recognize the threat and sound the alarm.