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Monday Dec 19, 2022

Top three helpful tips for filing patent applications as you move to DOCX format

Blog by Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO; Andrew Faile, Acting Commissioner for Patents; and Jamie Holcombe, Chief Information Officer

Update: The USPTO has issued a federal register notice delaying the effective date of the non-DOCX surcharge fee from January 1, 2023 to April 3, 2023, giving applicants more time to adjust to filing their patent applications in DOCX format. This blog has been updated to reflect the delayed effective date of the surcharge.

person typing on a laptop and submitting documents

As we announced last May, as part of the USPTO’s ongoing initiatives to use the most advanced technology and to issue and maintain robust and reliable patents, the USPTO is moving to DOCX. DOCX is key to the USPTO’s application readiness initiatives, which in the future will provide quick and reliable feedback to applicants to correct their applications before they hit the examiner’s desk so that examiners can spend more time working with applicants to identify subject matter for protection. It is also critical to reducing barriers and costs affiliated with global intellectual property (IP) protection by ensuring each country’s IP systems can talk, electronically, to one another. Currently, filing in DOCX allows for automated checks that prevent unnecessary delays in processing an application.

Thank you to all who have already moved to DOCX. Your feedback has helped up improve our processes to ensure DOCX works for all. It has helped up troubleshoot issues and provide guidance to stakeholders to ensure they do not make common mistakes that can be easily avoided. Though we encourage all applicants to move to DOCX as soon as they are able, for those needing some additional time, the USPTO, starting April 3, 2023, will allow applicants to file patent applications outside of DOCX upon payment of a fee (which will be discounted for small and micro entities). To help ease the transition to DOCX, we’ve also made several resources available on the DOCX page of the USPTO website.

To ensure a successful transition, we also wanted to share our top three helpful tips to ease the transition to DOCX:    

1. Consider submitting an optional applicant-generated backup PDF, also known as the auxiliary PDF, with your application  

We heard your ideas about filing an auxiliary PDF with your DOCX formatted application. In response to that suggestion, you can submit an applicant-generated auxiliary PDF of your application along with your DOCX version. While this opportunity was originally designed to be available until December 31, 2022, we have extended the program for six months through June 30, 2023. (Find out more in our Federal Register notice) Our hope is that this will provide you the confidence you need in filing with DOCX format, while providing peace of mind that the process is working as intended. There are currently no fees associated with submitting this auxiliary PDF, and it is completely optional.

2. Use the Auxiliary PDF (if necessary)  

We’ve heard from some of you that you are concerned the validated DOCX version or the USPTO-generated PDF version may contain a discrepancy. Though we saw discrepancies in earlier versions of the tool, we considered your feedback and have updated the tool accordingly. It is now at a very advanced stage (version 18). We have not been seeing requests to rely on the auxiliary PDF discussed above. That said, if you have specific concerns, there are a few steps you can take.

The Electronic Business Center (EBC) is a great place to start. Please notify the EBC of any concerns with your electronic file as soon as possible. A trained representative can work with you to address your concern. You can reach the EBC at 866–217–9197 (toll-free), 571–272–4100, or ebc@uspto.gov 6 a.m. to midnight ET, Monday through Friday.

In addition to contacting EBC, there are other ways you can correct your application, such as:

• Making a correction to your application that is supported by the validated DOCX, by filing a petition under 37 CFR 1.181
• Making a correction to your application that is supported by an auxiliary PDF, by filing a petition under 37 CFR 1.182
• Making a correction to your application by relying on the incorporation by reference provisions of 37 CFR 1.57(b) with a proper priority benefit claim

You can find detailed information about the different ways to correct DOCX formatted applications in our DOCX FAQs..

We have also received questions about the role that auxiliary PDFs play if any discrepancies arise in USPTO-provided priority documents. Regardless of whether an application is filed in DOCX or PDF format, the USPTO provides a certified copy of the application-as-filed for use as a priority document using documents submitted on the application filing date and stored in the electronic application file, together with a certification sheet. If the USPTO makes any errors in providing a certified copy of an application, upon notification, the USPTO creates and sends a corrected certified copy of the application. This would be the same process should a discrepancy arise in the DOCX conversion to a USPTO-generated PDF. If an applicant files a patent application in DOCX format with an auxiliary PDF, the auxiliary PDF can be used as evidence in correcting the certified copy at the USPTO. If an applicant provides an auxiliary PDF of the application along with the DOCX version of the application at the time of filing, a copy of the auxiliary PDF is also included with the certified copy.

3. Use Patent Center training mode to test your DOCX-formatted application 

Use the Patent Center training mode, which is an interactive simulation that allows you to practice filing using DOCX documents without officially submitting your patent application. You can use the training mode to familiarize yourself with other features in the new, modernized Patent Center, including a feedback document, which flags any errors in your application before you submit it. When you use training mode, you’ll have access to the same features and tools of the live Patent Center—except your application is not saved, data entered will not be submitted, and applications will not be associated with your customer number.

We’re working hard to make your transition to filing patent applications in DOCX as seamless as possible. To date, we’ve trained more than 20,000 people in our DOCX training sessions, gathered extensive feedback through our IdeaScale page, and addressed a litany of questions. In response to your feedback, we have also made office actions available in DOCX and XML formats and are now accepting DOCX for drawings, in addition to the specification, claims, and abstract, for certain applications. 

And we are never done listening. We welcome your feedback and will continue to incorporate your suggestions wherever possible. Contact us at the Electronic Business Center at 866–217–9197 (toll-free), 571–272–4100, or ebc@uspto.gov 6 a.m. to midnight ET, Monday through Friday. Thank you for your help and support as we continue modernizing our systems for the benefit of all.

Comments:

Good Morning: It would be very helpful if there were a PRINT button available when a submission has been SAVED in Patent Center. Our process is for assistants/secretaries to upload and save submissions, print the screen evidencing that the documents have been uploaded/saved, followed by a review by the attorney of record. The "Saved Submission" print-out is saved to our document management system as part of the filing. Thank you, Alesia

Posted by Alesia Mungons on December 19, 2022 at 09:54 AM EST #

Good morning! I have been filing the DOCX version of the application and a PDF version every time the Auxiliary PDF option doesn't pop up on the screen. I hope this is acceptable.

Posted by Nedy Calderon on December 19, 2022 at 10:38 AM EST #

I hate paragraph autonumbering. When submitting amendments or substitute specification, everything gets messed up. Can you eliminate the requirement for paragraph numbering? More generally, your plan to fine people for not using the docx format shows that it is inferior. If it were actually better, people would switch formats voluntarily. I would prefer to use docx but your requirements for autonumbered paragraphs make it an inferior format.

Posted by Frank Rosenberg on December 19, 2022 at 11:16 AM EST #

I tried DOCX back when you were doing it manually through a markup. I've essentially told my clients they have an increased filing charge. I don't want DOCX as its inaccurate and can cause issues when submitting- as admitted in your "tips" identified above you still have that happening in this iteration. I realize its easier and reduces fees FOR the office, but until you have a 100% functional system - you shouldn't shift from one that is 100% accurate. And yes - the three or four filings I did under that original e-filing program were THOROUGHLY messed up - especially with headings and formatting. PS - I reported this to the help line but they said they were not "working" on this - you're ADS in the Patent Center does not provide for the publication opt out for non-foreign filed applications, at least when I filed two months ago.

Posted by Anonymous on December 19, 2022 at 12:11 PM EST #

Would the USPTO please use clean versions of PDFs rather than scanned versions! We are 22 years into the 21st century. Presumably the scanned PDFs are for a work flow the begins with paper copies (rarely used now except under emergencies when EFS is down). I tried using DOCX a while back and was stunned my document was converted to a scanned PDF with a name that was different than used for the DOCX.

Posted by Alan BURNETT on December 20, 2022 at 11:27 AM EST #

The practitioner community has pushed back on this ill-conceived DOCX initiative. See "USPTO blinked on the non-DOCX surcharge" at blog.oppedahl.com/?p=8662 .

Posted by Carl Oppedahl on December 25, 2022 at 10:25 AM EST #

Good Morning: It would be very helpful if there were a PRINT button available when a submission has been SAVED in Patent Center. Our process is for assistants/secretaries to upload and save submissions, print the screen evidencing that the documents have been uploaded/saved, followed by a review by the attorney of record. The "Saved Submission" print-out is saved to our document management system as part of the filing. Thank you

Posted by The Maker Point on December 27, 2022 at 10:20 AM EST #

I hate paragraph autonumbering. When submitting amendments or substitute specification, everything gets messed up. Can you eliminate the requirement for paragraph numbering? More generally, your plan to fine people for not using the docx format shows that it is inferior. If it were actually better, people would switch formats voluntarily. I would prefer to use docx but your requirements for autonumbered paragraphs make it an inferior format.

Posted by jabbar huusain on January 24, 2023 at 06:06 AM EST #

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