December 18, 2019
By Paul Blizzard and Noel Courage
Patent attorneys are always concerned about the risk of document discrepancies arising when submitting electronic documents to patent offices. The Patent Offices are also concerned about storing and sharing documents as well as formatting them for publication. Consider the document handling in a simple international filing strategy for a patent application. A priority application may be submitted to one patent office. The PCT application may sometimes be filed in a second patent office or at the International Bureau as the Receiving Office. The priority patent office makes the priority application available to the PCT Office. The PCT application and other documents are published online and eventually made available to all designated patent offices, and the rest of the public at large. It is critical that document integrity be maintained at each document transmission, conversion and manipulation.
Where are the Primary Risks of Discrepancies?
Formatting discrepancies may occur when a patent practitioner creates a document with markup, for example, in mathematical equations, chemical equations, or anything involving fields or cross-references (e.g. automatic claim numbering).
There may also be formatting issues when a patent office manipulates a safely received document from an applicant. Many patent offices, for example, perform their own typesetting and formatting on top of the application body for consistency of appearance. For example, the USPTO provides a two-column layout and highlighting of reference numerals. There is always potential for formatting issues with any document exchange and conversion, so when choosing a software standard, these risks must be carefully assessed by patent offices to minimize risk to a patent applicant.
How are the documents currently filed by patent attorneys formatted?
The current markup language used for interchange between patent offices is XML, which is a popular and well used open document markup language. XML documents further require a document schema to define the structure of the data for interchange between systems. This document schema defines how the individual fields of the XML markup are treated by an application when reading, writing, and processing the XML data.
At the international level, XML e-filing has been permitted by the PCT Office in the WIPO ST.36 and ST.96 formats. At the national level, the Chinese, Japanese, and the South Korean patent offices have adopted the PCT e-filing standard for national (non-PCT) patent applications. Not all offices use XML. For example, the USPTO EFSWeb filings use PDF documents and the Canadian Intellectual Property Office uses PDF or TIFF documents.
WIPO/PCT Office Standardization
The purpose of an XML standard for the patent offices is to facilitate document exchanges between offices and patent practitioners and to clearly describe how the XML markup should be organized to ensure fidelity of patent records.
The PCT International Bureau is moving ahead with preparing a proposal to standardize filing and processing of text documents on Open Office XML (“OOXML”, otherwise known by its file extension DOCX)1. OOXML is the Microsoft Word XML document standard. It is a published and open standard, and Microsoft Office provides the primary support. Only a subset of the OOXML features are typically used in the preparation of patent documents.
We have not located a detailed WIPO publication online about why OOXML was preferred over a simpler standard, such as ODF. From comments by the EPO (a key influencer at WIPO), the choice appears to be at least partly due to the already widespread use of Microsoft products by patent office users2. It was stated by the EPO that:
“The re-engineered patent process requires a publication-ready, full-text technical specification to be made available at the point of filing. This becomes possible if applications are filed in DOCX OOXML format - a format that is already being used by the vast majority of our users to compile technical specifications. … Filing in DOCX OOXML format will be a major step towards facilitating the filing of documents for users and avoiding the quality losses and costs of optical character recognition.
The EPO intends to enable users of its online services to file technical specifications and subsequently filed documents (SFDs) directly as DOCX files. In most cases, this will eliminate the need for users to convert DOCX files to PDF format before filing with the EPO.”
The landscape if OOXML becomes the standard
It is likely that OOXML will become the standard. In addition to WIPO, the influential IP5 (5 key patent offices, USA, Japan, EPO, Korea and China) appear to be moving toward OOXML3.
For a competing software product to support OOXML, it must implement all the key features in the standard. The current field of competing software products that support OOXML and are useful to patent attorneys and patent offices appears to be limited. Patent attorneys and patent offices that use Microsoft products to prepare and file patent applications are likely to stick with that product. Users of other software products may switch to Microsoft to minimize risk of formatting issues.
Non-Microsoft users will have to rely on converters. Software for converting to or from OOXML will not eliminate conversion risks. Several patent offices including the WIPO (via ePCT), the USPTO and the EPO have developed converters that can transform OOXML into other formats. Furthermore, the ePCT-Filing includes a format converter that transforms document content from the Microsoft Office OOXML format into WIPO ST.36 and ST.96 formats. WIPO may host a single DOCX convertor for use by all patent offices4. Concern has been expressed about the number of DOCX converters under development, since different converters could lead to diverging results.
The goal of the PCT Office to modernize and harmonize electronic patent processing is certainly beneficial. We would encourage WIPO and patent offices to extensively and regularly consult patent practitioners and their associations as partners in this process.
1 The twelfth session of the PCT Working Group held from June 11 to 14, 2019.
2 See the EPO web site at: https://www.epo.org/applying/online-services/improving/docx-filing.html
4 PCT/WG/12/25 par. 21.
Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.