How to e-file a PatXML patent application with ePave

It is quite interesting to see that the EPO people want to be helpful in this regard. The EPOline web site has an FAQ which says the following at question 12:

Question: Can I file USPTO applications; I see this is 'greyed' out on the start-up screen?
Answer: Not at the moment. This version has to be cleared with the USPTO and their paper size, help screens, rules etc have to be added. However, there is a simple work around for those willing to edit the XML file -- simply change the country code from EP, or WO, to US in this line in the .pxml file you have created (after saving and closing PatXML):
<application-body lang="en" dtd-version="v1.1 01/07/2002" file="test-doc1" id="" country="US" file-reference-id="MyRef 123">
Change the file extension to .xml and the USPTO should accept this as a valid XML filing since they have agreed to use the same application-body.dtd (the XML tag set) as the EPO (as have the JPO and WIPO).

We tried this and as detailed below, we were able to file via ePave a patent specification prepared using PatXML. As it turns out a few additional steps were required to make it work.

Authoring in PatXML was pretty easy. Installation of PatXML (which we had not used before) proceeded without mishap. We had not used PatXML before. It, like PASAT and ABX, is what we around the office describe as "Microsoft Word with extra body parts grafted on." I don't mean this to be pejorative, but merely to describe how it works. It opens with a screen asking which sections of patent application we are going to want. We check the boxes for the sections we want, and it then opens an editing screen. Inserting images for figures was easy and did not cause any problems. Pasting paragraphs of specification worked fine.

One area of confusion came up when we tried to paste claims into the document. PatXML, rather like the ABX beta version we used a few months ago, assigns a separate claim number to each paragraph of a multi-paragraph claim. We eventually figured out that the way to set apart paragraphs of a single claim in PatMXL is to type shift-enter. I don't know how this is stored within PatXML but it permits a definite line break and yet avoids triggering the automatic insertion of a new claim number. Maybe this approach (using shift-enter) is in the PatXML documentation, but if it is I was not able to find it.

First, of course, there are the twenty-six files that must be copied into the project folder before ePave will accept the project. These files are listed in the article Using the PCT-SAFE XML editor with ePave to file a US patent application. We copied these files into our submission folder.

We then used Notepad to change the "country" field to say "US" as described in the EPO FAQ. We then renamed the file to end with ".xml" instead of ".pxml".

The next issue that came up was when we were in ePave and attempted to attach the XML file. ePave complained that it was unable to find a filed called "application-body-v1-1.dtd". (As an aside, it appears to us that ePave is designed to look inside the XML file and to find any and all file references within the XML file. It looks to make sure that the referenced files are also present in the project folder. ePave additionally seems to look inside each DTD file to see if there are any file references inside, and seems to proceed recursively until each file having internal references to any other file has been checked to make sure that other file is present.)

We used Notepad to look inside the XML file, and the first few tags were:

<!DOCTYPE application-body SYSTEM "application-body-v1-1.dtd" >

It seemed pretty clear that ePave had seen the mention of "application-body-v1-1.dtd" in the "DOCTYPE" tag, and was unhappy that we had not provided a file called "application-body-v1-1.dtd" in the project folder. We addressed this problem by editing the XML file (using Notepad) so that it said "application-body.dtd" instead. Stated differently, we deleted the characters "-v1-1". With that change, ePave was willing to attach the XML file.

The next stumbling block was that ePave was not willing to let us view the XML file. (It was the same way when we had authored using PCT-SAFE Editor and tried to view that XML file in ePave.) This is not the best state of affairs given that when we file using ePave, we are required to state that we viewed the application using software provided by the USPTO. Expanding the XML file listing in the "attachments" window, I was able to view each of the TIF files individually so I was confident the figures were there and were readable.

The next issue was asking ePave to validate the filing. We received two warnings, but thankfully no errors. The warnings were:

<<all XMLs having <invention-title>>>

Common elements across multiple XML documents within the submission package do not 
have synchronized data content. #Supporting Msg:<invention-title> not the same or 
having font fomat. 


The paragraphs (element p) are not individually and consecutively numbered by 
assigning an Arabic numeral as a value of attribute 'num' of each element 'p' 
within the XML document (as specified in 37 CFR 1.52(b)(6)). #Supporting Msg: 001

The first of the messages did not bother us. It merely meant that the title within the XML file did not match the title we had hand-typed into ePave. We decided not to worry about the paragraph numbering; we think this is because PatXML does not give a paragraph number to the Abstract while ePave assumes the Abstract will have a paragraph number.

We then submitted the application and received our Acknowledgment Receipt. After that we phoned up the EBC desk and a nice person there looked at what had been filed. It sounded as though the TIF image files came through okay and that the XML file was there, though when the EBC person viewed it the tags were all visible and the figures did not show up in the rendered XML file.

We expect the tool used by EBC to view such XML files may rely upon the presence of some style sheet that is missing from our submission package.

We then filed the same XML file as a PCT application to the International Bureau without mishap, and received a PCT "demo" filing receipt. You can see an article describing that filing.