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Tuesday May 25, 2021

Modernizing patent filing with DOCX

Guest blog by Acting Commissioner for Patents Andrew Faile and Chief Information Officer Jamie Holcombe

DOCX promtional image

At the USPTO, we are continuously working to modernize and streamline our patent application systems. As part of that ongoing effort, you can now file patent application-related documents in DOCX format through EFS-Web, Private PAIR, and Patent Center. To improve application quality and efficiency, the USPTO will be transitioning to DOCX for all filers on January 1, 2022. Keep reading to learn more about DOCX, its benefits, and opportunities to provide feedback on implementation.

DOCX is a word-processing file format supported by many popular applications, such as Microsoft Word, Google Docs, and LibreOffice. As an open standard format, DOCX offers a safe and stable basis for authoring and processing intellectual property documents.

Filing in DOCX provides you with many benefits in the application process, including:

  • Increased efficiencies: eliminates the need to convert structured text into a PDF for filing.
  • Higher data quality: reduces conversion errors that can occur when converting to a PDF file.
  • Smarter interface: detects common errors, such as formatting errors, and provides instant feedback to prevent unnecessary delays in processing your application.
  • Privacy: provides automatic metadata detection (e.g. track changes and comments) and removal features to support the submission of only substantive information in the DOCX file.
  • Improved application quality: provides content-based validations pre-submission, identifying issues up front and allowing for them to be addressed before examination begins.
  • Ease of use: provides automated document indexing.
  • Compatibility: eliminates the non-embedded font error, the most common obstacle in uploading a PDF, by uploading your file with supported fonts.

We believe that meaningful improvements to our application processes can only happen through collaboration with our users. To that end, we received helpful feedback last year after the publication of our federal register notice that prompted us to make a few changes as we transition to the DOCX format.

First, we delayed the effective date for the non-DOCX surcharge fee to January 1, 2022, to provide more time for applicants to transition to this new process, and for the USPTO to continue our outreach efforts and address customer concerns. We’ve also made office actions available in DOCX and XML formats and further enhanced DOCX features, including accepting DOCX for drawings in addition to the specification, claims, and abstract for certain applications.

Additionally, based on what we’ve heard from our customers, we are adopting the submitted DOCX files as the authoritative document, otherwise referred to as the source or evidentiary copy (read the federal register notice). This will simplify the filing process, allowing the applicant to only review the DOCX files before submission rather than reviewing the USPTO-generated PDF version.

We look forward to continuing our engagement with the public on the DOCX transition so we can better serve America’s innovation community. We will be hosting DOCX training sessions on a regular basis to provide more information, demonstrate how to file and retrieve DOCX files in Patent Center, EFS-Web, and PAIR, and answer any questions. Applicants can also file test submissions through Patent Center training mode to practice filing in DOCX. In addition, we will offer a listening session this fall to gather feedback and suggestions to further improve DOCX features.

For more information and to view frequently asked questions, visit the DOCX page of the USPTO website. If you need assistance, please contact the Patent Electronic Business Center at ebc@uspto.gov or 866-217-9197.

Comments:

DOCX (https://en.wikipedia.org/wiki/Office_Open_XML), a format developed by Microsoft for MS Office, seems like an odd choice. OpenDocument (https://en.wikipedia.org/wiki/OpenDocument), an OASIS and ISO/IEC standard developed by the open source community at large, seems like the better/logical choice.

Posted by Erik J. Heels on May 25, 2021 at 11:43 AM EDT #

When will the USPTO publish a docx style guide indicating fonts, sizes, and directives for effective docx filing. For example, where to place headings, favored paragraph numbering, etc. Right now everyone is guessing.

Posted by Erica Layman on May 25, 2021 at 11:46 AM EDT #

I just tried my first toe in the .docx water a couple of days ago on EFS-Web, and it was a bust. I uploaded a .docx version of an abstract with no known problems (1.5 line spacing, <150 words). It was rejected for insufficient line spacing. The error message was "Doesn't appear to have line spacing >1.05" . But both Microsoft Word and I knew it was 1.5. I tried again after reformatting the Word document for 2.0 line spacing. Rejected again with the same diagnosis. So I uploaded a PDF as usual. Note that this was in EFS-Web in the Attach .docx section, not in Patent Center, if that makes a difference.

Posted by Greg Magel on May 25, 2021 at 12:01 PM EDT #

I have concerns regarding whether or not life science patent applications which include chemical structures, equations, etc. will 100% upload properly.

Posted by Dorothy Hauser on May 25, 2021 at 12:01 PM EDT #

I am not sure what you meant by, "the USPTO will be transitioning to DOCX for all filers." Are you saying that pdf format will no longer be accepted? It took years for the pdf format to "settle" into a known manner of uploading to PAIR and many are confident that DOCX will have its own teething pains. Also, using DOCX for drawings seems on its face confusing since DOCX was always meant as a non-graphical text standard. Applying that to drawings which nobody currently does seems problematic.

Posted by Russell C. Gache on May 25, 2021 at 12:36 PM EDT #

Don't have much confidence in the PTO's ability to implement this when they can't even get the signon for the web training for DOCX to work...

Posted by Kevin Klughart on May 25, 2021 at 12:47 PM EDT #

USPTO should not charge a special fee for those who wish to continue to upload documents in the .pdf format. Every part of the stated rationale is deeply flawed. Docx is not an "open standard format", nor truly is it "supported by many popular applications, such as... Google Docs, and LibreOffice". It is a proprietary Microsoft format, which has been painstakingly reverse engineered but is still not fully supported by any application other than Microsoft Word. "...eliminates the need to convert..." This takes seconds. "...provides automatic metadata detection... and removal..." This can be done with the .pdf format too. "we are adopting the submitted DOCX files as the authoritative document..." This is a terrible idea. While .pdf, as a standard format, looks exactly the same in any software program, .docx files frequently look quite different in different programs, ensuring there is no certainty regarding the intended appearance of the document.

Posted by Anonymous on May 25, 2021 at 01:22 PM EDT #

The USPTO needs to drop the planned January 1, 2022 $400 penalty fee for failure to use DOCX becasue the conversion process is unreliable. I attended the DOCX training and it was a waste of time. They taught material already known to PDF filers. They merely provided web links and refused to answer questions about the legal options when the conversion contains errors. The USPTO is refusing to provide any process for correction of errors.

Posted by Daniel on May 25, 2021 at 01:22 PM EDT #

I have been using DOCX filing for more than a year and until recently have been happy with it. However, the last two applications I filed had serious issues during the DOCX to PDF conversion process. Since you use the system-generated PDF file as the master document, not the Applicant-filed DOCX file, this caused me to receive a "Notice to File Corrected Application Papers." While, in both cases, ultimately there was a happy ending thanks to the helpful folks at the Application Assistance Unit and the EBC, it took up to five calls in and many weeks to resolve in each case. I think there needs to be a direct mechanism to reporting issues with DOCX (and Patent Center) rather than relying on the EBC. I hope you find this feedback helpful.

Posted by Alan Flum on May 25, 2021 at 01:57 PM EDT #

The PTO's proposal to treat the DOCX as "the authoritative document" is meaningless: do you mean the DOCX as rendered in LibreOffice, the DOCX as rendered in MS Word 2016 on Windows Server, the DOCX as rendered in Word Perfect? If they're different (and they will be), which one wins? Under the PTO's former proposal, the applicant would file a DOCX, the PTO's computer would show a PDF to the filer, the filer would have an hour to review it (the timeout period), and then the PDF would be "authoritative." Under the PTO’s May 25 proposal, the party filing the document will have no opportunity whatsoever to review the rendering that the PTO will rely on. Are equations rendered the way that they appear on the filer's computer, or some other way? Applicants will have no way to know, no way to check, no way to seek correction. The PTO’s May 25 proposal makes a really bad idea even worse. A poor opportunity to review a filing is better than no opportunity at all.

Posted by David Boundy on May 25, 2021 at 04:45 PM EDT #

The PTO's IT staff are confusing two entirely different things -- "standard" vs. "interoperable" or "portable." The two are not synonyms! The metric system is a "standard" All car alternators in 2021 are metric. But that doesn't mean that alternators are interchangeable. Most standards don't specify enough parameters to guarantee interoperability. That's certainly the case with ISO-29500 and ECMA 376 -- both leave many parameters as "implementation defined." (The PDF standard is different -- it's one of the few interoperability standards.) Some of the problems of DOCX for the PTO's intended purpose are discussed at https://brattahlid.wordpress.com/2012/05/08/is-docx-really-an-open-standard DOCX won't work. It's a dumb idea. Give it up.

Posted by David Boundy on May 25, 2021 at 05:35 PM EDT #

We need both a docx patent application template and a docx style guide indicating such things as fonts, sizes, heading and directives for avoiding document error messages. I would like to read more about how to do it and less about how wonderful it will be. I already see a good reason for it. Trial and error is an unpleasant way to learn something.

Posted by Frank H Foster on May 25, 2021 at 05:51 PM EDT #

I applaud the USPTO's move to consider the submitted DOCX files as authoritative. That removes one of my biggest concerns, where I had to assume responsibility for the Office's rendering from DOCX to PDF. I understand that there is some hesitation in the user community that DOCX may lead to publication errors. While I expect the opposite, maybe offer an option to redundantly submit a PDF copy of how the DOCX was meant to be rendered, in particular when it includes complex elements such as mathematical or chemical formulae?

Posted by Axel Nix on May 26, 2021 at 11:59 AM EDT #

I use Linux to do all my work. The docx output from libreoffice is very different from Microsoft word. Does this mean we all have to buy windows with ms office now? Is forcing all patent practitioners to single source their software from Microsoft legal? Why can’t the uspto take a few formats like .odt, .pdf, and .docx?

Posted by John Heithaus on May 27, 2021 at 01:41 AM EDT #

When you say you will be able to use DOCX to do "content-based validations pre-submission, identifying issues up front and allowing for them to be addressed before examination begins," because it "detects common errors, such as formatting errors, and provides instant feedback" don't you really mean we'll have to format these DOCX files using your MicroSoft(R) Word macros? These macros almost never work on OpenSource solutions such as OpenOffice and LibreOffice, which is pretty much the only option for those of us who run Linux on our desktop and laptop systems. Do you really mean to force us to use MicroSoft or Apple operating systems, just in order to run MicroSoft Word, in order to format our patent applications with the USPTO macro suite? Can you guarantee that secure versions of MicroSoft Word & the operating systems it runs on will be made available to us to avoid security breaches? Are you planning to give us the extra thousand bucks it would take us to move our entire design drawing and document management systems over to MicroSoft Word on new hardware running MicroSoft or Apple operating systems? And, no, we're NOT going to use the 'online' versions of MS Word, what do you think we're crazy? We're air-gapped. Sorry. Moving to what amounts to MicroSoft Word/Microsoft and Apple OS vendor lock-in seems like a pretty blinkered solution to the USPTO's apparent inability to maintain a complete set of PDF fonts. Why not do what the American Mathematical Society does, and supply a set of LaTeX macros that work on ALL platforms -- even ones without a GUI!

Posted by Cheryl Fillekes on May 27, 2021 at 10:11 AM EDT #

When you say you will be able to use DOCX to do "content-based validations pre-submission, identifying issues up front and allowing for them to be addressed before examination begins," because it "detects common errors, such as formatting errors, and provides instant feedback" don't you really mean we'll have to format these DOCX files using your MicroSoft(R) Word macros? Word macros almost never work on OpenSource solutions such as OpenOffice and LibreOffice, the only option for those of us who run Linux or BSD. Does the USPTO plan to fund moving our entire design drawing and document management systems over to MicroSoft Word on new hardware running a MicroSoft or Apple OS with this de facto vendor lock-in? The AMS has solved this problem with AMSLaTeX that work on ALL platforms -- even ones without a GUI!

Posted by Cheryl Fillekes on May 27, 2021 at 10:19 AM EDT #

With all of the problems noted in the comments regarding the DOCX rollout, you would think that the PTO would allow (as a backup) the filing of a PDF file IN ADDITION TO the DOCX file so that if there were any problems in the PTO interpreting the DOCX submission that the PDF could be used as a backup. This would ensure that should the DOCX somehow become corrupted, the PDF file would remain as a substitute specification/claims/abstract.

Posted by Kevin Klughart on May 27, 2021 at 11:37 AM EDT #

The DOCX problems noted in the comments ignore a more fundamental problem with EFS. After using the current EFS system for some time, I must comment that the current system is really some of the worst web software I have ever used. The user interface is terrible, lacks any form of incremental file checking or correction (e.g., can't the system automatically rotate PDF drawings to the correct landscape/portrait orientation?), has terrible viewing aesthetics, and doesn't support any form of data entry history to allow reuse of prior data entries. Furthermore, the issues with DOCX are just part of the problem - why doesn't the PTO accept standard CAD files for the drawings? This alone would encourage more drawings per application which in turn would improve patent quality. This deficiency is in my opinion greater than that posed by the continued use of PDF files for the specification/claims/abstract. What is really needed here is an overhaul of EFS with extensive user input. I guess if you were to phrase this comment in a nutshell, it would be that the PTO lacks the vision to make EFS work for the customer base. Some input outside of the echo chamber is required to correct this deficiency.

Posted by Kevin Klughart on May 27, 2021 at 11:47 AM EDT #

I understand that many of the users of EFS use windows. However, the patent office needs to take note that windows systems are not particularly secure. Patents often contain sensitive information. An entire MPEP section at 120 discusses secrecy orders. The USPTO should carefully consider whether it is in the interest of the US for a windows zero-day exploit to provide its owner with access to the systems of all patent practitioners.

Posted by John Heithaus on May 27, 2021 at 06:32 PM EDT #

PDFs are universal worldwide. PDF software is relatively inexpensive and simple to implement and use. Virtually every document type known to man is easily saved or printed to PDF format, thereby accommodating all users irrespective of their IT environment. DOCX, on the other hand, presents countless, FORESEEABLE issues and probable hardships, such as the many described in just a few comments made thus far. The DOCX list of "many benefits" is beyond negligible. I agree EFS could use a little tweaking, but why is it necessary to attempt fixing PDFs when they are not broken? Users will be forced to file DOCX documents then the USPTO will convert them to PDF. Wait, what???

Posted by 10.240.16.80 on May 29, 2021 at 10:07 AM EDT #

I have doubts that patent applications for life sciences which include chemical structures, equations, etc. are loaded 100% correctly

Posted by MR Linux on May 31, 2021 at 12:06 PM EDT #

Well, for myself, I learned a lot about Modernizing patent filing with DOCX and the various issues related to this. I hope they settle on a system that works efficiently for all concerned.

Posted by David Scheer on June 01, 2021 at 06:07 AM EDT #

Also, as of now the DOCX document is likely only going to be retained for a year, putting the burden on the applicant to find errors even before prosecution begins. (See federalregister.gov/d/2021-11256 , "After the expiration of the one-year period, the USPTO disposes of the paper..." And no, that "paper" isn't just referring to physical paper-- that also includes the DOCX.)

Posted by Chris King on June 12, 2021 at 01:51 AM EDT #

I appreciate this step taken by the USPTO. Hope furthermore advancements to be brought up in future with further benefits.

Posted by MD Ashraf on June 12, 2021 at 03:39 AM EDT #

Does the DOCX requirement apply to filing U.S. national stage applications?

Posted by Franco Serafini on June 21, 2021 at 02:32 PM EDT #

Why not permit the docx specification to be submitted as a missing part? Exactly why does this need to be submitted with the filing to avoid a punitive tax? USPTO needs to provide a local server verification system fur use by the public. We need to be able to check documents while they are being drafted, and not only at the time of final upload, when there may not be time to fix the formatting. We need senior USPTO management to show that it cares about these issues and the individuals have actually tested the system and are taking full responsibility for its failings. (See, Arthrex).

Posted by Steven M Hoffberg on July 06, 2021 at 04:08 PM EDT #

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