On January 1, 2022, the U.S. Patent and Trademark Office (USPTO) will officially transition to DOCX format for filing nonprovisional utility applications. Any nonprovisional utility application filed in PDF format on/after this date will incur a USPTO surcharge of $400. Currently, the USPTO allows nonprovisional utility applications to be filed in either DOCX format or PDF format without incurring a surcharge. The current USPTO position is that the DOCX transition will not require changes to the document format for filing of U.S. provisional, U.S. national stage, and U.S. design applications, meaning that such applications may be filed in PDF format after the transition without incurring the surcharge.
We attach a copy of the USPTO’s DOCX formatting requirements (available here) for nonprovisional utility applications (Specification, Claims, and Abstract). Notably, the requirements specify that any DOCX document that contains an error cannot be filed unless the error is rectified. Following these requirements will help prevent warnings and errors during the electronic filing process. We encourage you to provide us with your nonprovisional utility applications in USPTO DOCX-compliant format before this transition, so that we can provide you with feedback and recommendations regarding any DOCX-compliance warnings and errors. We also encourage you to always provide us with a PDF version of your nonprovisional utility applications, in case any DOCX errors cannot be rectified and filing of the PDF version becomes necessary.
According to the USPTO (see https://www.uspto.gov/patents/docx), DOCX-compliant documents may be created in Microsoft® Word® 2007 or higher, Google® Docs, Office® Online, LibreOffice®, and Pages® for Mac®. However, we have noticed some potential rendering issues that might arise due to lack of file portability in DOCX format. For example, if a DOCX document includes equations and/or formulas, some characters and symbols may not display properly when the DOCX document is opened using different software than that used to create the document. Further, because the USPTO converts the DOCX document into a PDF document before completion of the filing, the USPTO-generated PDF document may also incorrectly display the characters and symbols. Applicants will have up to 12 months to request corrections of any discrepancies or errors between the filed DOCX document and the USPTO-generated PDF document before the USPTO discards the filed DOCX document.
As you prepare for the USPTO’s DOCX transition, please consider the following options:
(1)You may continue to provide us with your nonprovisional utility applications in PDF format for filing on/after January 1, 2022, and simply incur the $400 USPTO surcharge.
(2)You may provide us with your nonprovisional utility applications in DOCX format for filing before/after January 1, 2022, and include a PDF version for filing if any DOCX-compliance issues arise and cannot be rectified prior to filing.
(2)(a) If any DOCX-compliance issues arise and are not rectified by the last available business day before the filing bar date, we would proceed to file the application using the PDF version and you will incur the $400 USPTO surcharge.
(2)(b) If the DOCX document is successfully filed, you may instruct us to review the USPTO-generated PDF document to identify any discrepancies or errors relative to the DOCX document. There will be a fixed fee for this review for applications that are 20 pages or less (Specification, Claims, Abstract, and Drawings). An additional fixed fee would apply in increments of 10 pages above the initial 20 pages. We will notify you if we identify any discrepancies or errors, and provide a recommendation regarding correcting the same.
(2)(c) If the DOCX document is successfully filed, you may alternatively prefer to perform your own review of the USPTO-generated PDF document to identify any discrepancies or errors relative to the DOCX document. We would then rely on you to inform us of any identified discrepancies or errors, so that we may request correction of the same within 12 months from filing.
(3)In the absence of your instructions according to options (1) or (2)(a)/(b)/(c) above, we would proceed to file your nonprovisional utility applications as follows:
(3)(a) If you provide us with a PDF document only, we would proceed to file the application according to option (1).
(3)(b) If you provide us with a DOCX document and a PDF document, we would first attempt to file the application using the DOCX document. If the DOCX document cannot be successfully filed by the last available business day before the filing bar date, we would then proceed according to option (2)(a). If the DOCX document is successfully filed, we would then proceed according to option (2)(c).
(3)(c) If you provide us with a DOCX document only, and the DOCX document cannot be successfully filed by the last available business day before the filing bar date, we would proceed to create a PDF document from the DOCX document (if possible) and file the application according to option (1). If the DOCX document is successfully filed, we would then proceed according to option (2)(c).Please let us know which option you prefer. In the meantime, we will keep you updated as more information about the USPTO DOCX transition becomes available.
The Best Lawyers in America®
The National Law Journal