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Wednesday Apr 27, 2022

You spoke, we listened: easing the transition to DOCX

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

Graphic about DOCX

A few years ago, the USPTO advanced its efforts to use all available technology to strengthen patents and reduce pendency times by introducing the DOCX format for patent application filings. DOCX is a widely-available word-processing file format supported by many popular applications, such as Microsoft Word 2007 or higher, Google Docs, Office Online, Pages for Mac, and LibreOffice. Filing in DOCX offers many advantages, including:

• Increased efficiencies: eliminates the need to convert structured text into a PDF for filing
• Higher data quality: reduces 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 an 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 a file with supported fonts

Believing that meaningful improvements to our application processes can only happen through collaboration with our users, we sought feedback on the transition to DOCX. Hearing concerns that the new format might result in conversion discrepancies, we just announced an interim, optional procedure to ease the transition. Through December 31, 2022, applicants may upload a backup PDF version of their application with their DOCX version. There are no fees associated with this backup PDF. And there is no obligation to provide a backup PDF.

The backup PDF option will allow applicants concerned about the new format to gain confidence in the reliability and accuracy of filing applications in DOCX. Applicants can be assured that, should there be any conversion discrepancies, they can rely on the backup PDF to verify the substance of their original filing. You can read more about the backup PDF in our recent Federal Register Notice.

This new option builds on the USPTO’s other transition-easing initiatives. These include delaying the effective date of the non-DOCX surcharge fee from January 1, 2022, until January 1, 2023, to allow more time for users to adapt, and adopting submitted DOCX files as the authoritative document to simplify the filing process. This allows applicants to review only the DOCX files before submission rather than also having to verify 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 also offer many resources to help applicants file in DOCX format. We host frequent DOCX training sessions to demonstrate how to submit and retrieve DOCX files in Patent Center and to answer questions. Applicants can also file test submissions through Patent Center training mode to practice filing in DOCX. And our DOCX page on the USPTO website includes frequently asked questions, a quick reference guide, and a video overview of filing DOCX documents in Patent Center.

We encourage you to start filing your patent applications in DOCX now. Doing so will not only streamline the process for you, it will also improve our ability to examine your application quickly and effectively. If you need assistance, please contact the Patent Electronic Business Center at ebc@uspto.gov or 866-217-9197. And please send your additional feedback, suggestions, and questions to eMod@uspto.gov.
Thank you for your help and support as we work hard to improve our systems for the benefit of all.

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