Our previous communication of November 19, 2021, noted that the U.S. Patent and Trademark Office (USPTO) delayed implementation of the $400 non-DOCX filing surcharge until January 1, 2023.
In a USPTO communication to stakeholders and blog post by the Director on April 27, 2022, the USPTO announced that “[it] is providing applicants with the option, on a temporary basis, to submit an applicant-generated PDF version of the application along with the DOCX file(s) when filing an application in Patent Center” through December 31, 2022. According to the USPTO, submitting the applicant-generated PDF version of the application along with the DOCX file(s) will not incur any additional fees during the temporary period. And, “[a]s December 31, 2022, approaches, the USPTO will evaluate whether there is a need to extend the temporary period beyond December 31, 2022, and will inform the public of any extension of the temporary period.”
The USPTO’s stated goal is to ease the transition to DOCX filing and to address concerns related to rendering/conversion discrepancies. If any DOCX rendering/conversion discrepancies issues arise during this temporary period, applicants can petition the USPTO to make a correction based on the applicant-generated PDF version. The USPTO indicated that an applicant-generated PDF that accompanies a DOCX filing will not become part of the permanent record, and the “USPTO will dispose of the applicant-generated PDF, and all copies thereof, after a retention period of at least three years after the patent grant or abandonment of the application.”
Details are provided in the Federal Register to be published on April 28, 2022, available here: https://public-inspection.federalregister.gov/2022-09027.pdf. See also the USPTO Director’s blog post, available here: https://www.uspto.gov/blog/director/entry/you-spoke-we-listened-easing
We will keep you updated as more information about the USPTO DOCX transition becomes available.
The Best Lawyers in America®
The National Law Journal