USPTO Proposed New Fees

The USPTO recently proposed new fees, effective January 2021.  While this date seems far away, patent applicants should consider one fee in particular and how they could start preparing for the change.  The proposed fee at issue is for filing a non-provisional utility application using DOCX.  The fee will be $400 lower ($320) than the fee for filing the application without DOCX ($720).

What is DOCX? A program that the PTO has been working to implement for some time, and enables applications to be filed in text format, as opposed to PDF.  DOCX makes applications more accessible to Examiners, and the publication of the applications is simplified because the need to OCR the application is eliminated.

In 2017, Oblon was invited to participate in a PTO Text Pilot Program and was one of the first firms to file DOCX applications and to give feedback to the PTO on the limitations of DOCX at that time.  Oblon was later invited to attend a workshop at the PTO with other firms to share ideas and create user friendly suggestions for DOCX.  The PTO later made DOCX accessible to all users.  Applicants may want to become familiar with DOCX and implement training and processes to enable its use so as to save $400/app. when the fees become effective. Oblon regularly files selected applications using the DOCX format in preparation to provide the cost savings that is expected to be available to our clients in 2021.