USPTO Continues Transition to Filing Patent Applications in DOCXApril 27, 2022

The United States Patent and Trademark Office (USPTO) continues the push towards requiring all patent applications to be filed in DOCX format, instead of PDF, which is currently the case. Applicants would be able to still file in PDF format, but with an extra surcharge fee.

As you recall, this was intended to go into effect as of January 1, 2022, but this was delayed at least one year to January 1, 2023 to “allow more time for users to adapt”.

Just today, newly appointed Director of the USPTO, Kathi Vidal, released a blog post (see, e.g., Director’s Forum: A Blog from USPTO’s Leadership) indicating that the USPTO is instituting a new program to ease the transition to DOCX filing. According to the blog, as well as an unpublished Federal Register Notice (Federal Register :: Public Inspection: Filing Patent Applications in DOCX Format) linked in the blog, the USPTO is providing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. The goal is for users to gain experience and confidence for using the DOCX format, which has been fraught with errors during the testing stages. This will only be available via Patent Center filings, and will not be available for applications filed via EFS-Web, which the USPTO is phasing out.

As per the Director’s Blog linked herein, the Federal Register post is being officially published April 28, 2022, but it is available online per the link above.

The unpublished Federal Register post indicates, “Under this temporary new process of allowing applicant to optionally submit the applicant-generated PDF, the USPTO has created a new document description for the optional applicant-generated PDF submitted with the DOCX file(s) during the temporary period. This new document description is “Auxiliary PDF of application,” and the corresponding document code is AUX.PDF. If filing an applicant-generated PDF in Patent Center, it should be a single PDF and contain all the sections being filed in DOCX format. Use of this document description by applicants will facilitate recognition of the document in the application file and will avoid confusion with the specification, claims, and abstract that are to be used during examination and publishing.”

If the DOCX file(s) include an error that is supported by the PDF, the applicant will need to file a petition that identifies how the PDF supports the correction needed for the DOCX file(s). However, in addition to amendments required, the USPTO will waive the petition fee when relying on the applicant-generated PDF as the source to correct the record, in an attempt to allow applicants to gain confidence in the USPTO system.

Finally, “The applicant-generated PDF that accompanies a DOCX filing will not become part of the permanent record unless a petition is filed requesting the USPTO to correct the record in view of the applicant-generated PDF. In the absence of such a petition, 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.”

The attorneys, agents, and USPTO professionals of McKee, Voorhees & Sease are continuously learning and staying on top of all USPTO processes, procedures, and programs, and we are confident in our ability to best file your patent applications efficiently to be sure to protect your most valued innovations via the patent applications.

If you have any questions on this or any other program at the USPTO, or questions on getting your inventions protected, please contact an attorney at McKee, Voorhees & Sease, PLC.

Luke T. Mohrhauser is a Patent Attorney and Chair of the Mechanical and Electrical Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Luke directly via email at luke.mohrhauser@ipmvs.com