Since our previous communication of March 24, 2023, the U.S. Patent and Trademark Office (USPTO) has once again delayed the implementation of the $400 non-DOCX filing surcharge fee. The delay extends the effective date of the fee from June 30, 2023, to January 17, 2024. The USPTO will utilize this additional time to solicit public comments on the fee's impact and complete the necessary paperwork clearance process. Details are provided in the Federal Register to be published on June 6, 2023. The pre-publication version is available here: https://public-inspection.federalregister.gov/2023-11917.pdf
In addition, the USPTO has extended until further notice the option for submitting an applicant-generated back-up PDF version of an application in addition to a validated DOCX version only when filing an application in Patent Center. According to the USPTO, “an applicant-generated PDF with the validated DOCX file(s) when filing an application in Patent Center will have an ongoing safeguard should any unexpected conversion discrepancies occur during the filing process.” Also according to the USPTO, applicants choosing to file back-up PDF and validated DOCX versions in Patent Center will not incur any extra-pages fee due to the back-up PDF as long as they are following the process for submitting an applicant-generated PDF (so-called auxiliary PDF) described in the USPTO’s quick-reference guide. Further, upon petition, applicants “will be able to rely on the applicant-generated PDF if a discrepancy occurs during the filing process.” Details are provided in another section of the Federal Register to be published on June 6, 2023. The pre-publication version is available here: https://public-inspection.federalregister.gov/2023-11910.pdf
We will keep you updated as more information about the USPTO DOCX transition becomes available.