As a part of the eMod effort, filing formats for patent applications have been expanded to include DOCX format. The eMod Text Pilot Program was conducted August 2016 to September 2017 to gather feedback and continuously improve the new feature. In September 2017, text filing was made available to all EFS-Web Registered and Private PAIR users. Users who file in text will be able to access their submissions and Office actions in DOCX and XML formats, along with the regular PDF format. Currently, USPTO is only accepting DOCX for specific initial application parts for new utility non-provisional applications:
As of September 20, 2018, 2,000 filings have been submitted in DOCX format.
What is DOCX?
DOCX is a word processing file format based on open standards, including Extensible Markup Language (XML). DOCX is supported by many popular word processing 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. DOCX allows users to file data and changes the USPTO from an Image filing process to Information filing. This enhances the user experience and benefits the USPTO.
Why file in DOCX?
- Increased efficiencies—eliminates the need to convert structured text into a PDF for filing
- Higher data quality—reduces conversion errors
- Greater reuse of content and improved searching for patent applications and submissions
- Improves document identification by automatic detection
- Original structured text document is within Private PAIR
- Applicants are able to use structured text, such as copying and pasting from office actions which are available in DOCX format in Private PAIR to draft responses
- Automatic metadata detection and scrubbing
Frequently Asked Questions (FAQs)
What is the benefit of the feedback document?
The feedback document is automatically generated to show users the location of warnings or errors prior to submission. This document is only available in the pre-submission process and will not be saved or available within IFW post-submission. Users are able to save the feedback document locally if they would like to keep a copy.
How does requiring the DOCX format benefit the Office?
DOCX is XML-based, which simplifies the process for the Office to share the data to USPTO back-end systems and other Intellectual Property Offices (IPOs).
In addition, leveraging DOCX removes the need for the Office to convert PDFs to XML using OCR (optical character recognition), thereby reducing the possibility of errors.
DOCX validation of specification, claims and abstract reduces time and resources required during pre-examination.
Can an application be filed in DOCX still have drawings, prior art, etc be submitted as pdf without penalty?
The ability to file in DOCX format is a new feature, and PDF submissions are still an option for users. At this time, DOCX filing is limited to the specification, claims, and abstract for new utility nonprovisional applications. The USPTO is currently working to expand DOCX capabilities to other filing types.
If a DOCX filing is being converted to PDF during submission (which needs to be checked to be sure formatting is correct), is requiring the DOCX format just adding another step in the process for applicants?
The USPTO conducted a study and found that over 80% of applicants are authoring their applications in DOCX format (through writing tools such as Microsoft Word). Because the files are originally in a DOCX format, uploading the original file eliminates the step for the applicant to convert the document to PDF prior to submission. Instead, the applicant is able to save the step of converting because the system will automatically convert the DOCX to PDF.
The review process is typical for all applications, regardless of filing format. Currently, the USPTO has not encountered any issues with formatting or pagination in DOCX submissions. As noted in the EFS-Web legal framework, it is encouraged to check the contents of their submissions for completeness and accuracy via PAIR.
Is using the DOCX format secure?
The submission of a DOCX file generates a unique hash based on the content within the file. The algorithm is similar to what is currently in EFS-Web for PDF submissions. The unique hash shows the DOCX file cannot be changes post-submission.
Metadata is generally removed by applicants prior to submission. However, if metadata is found during the validation process, it is automatically removed prior to submission. Examples of metadata include author, company, last modified by, etc. The only information that is preserved is the size, page count, and word count.
The system rejects DOCX with macros (DOCM), and will result in an error.
The system is equipped with virus detection software to prevent malware.
Outgoing DOCX documents (i.e. Office actions) from the USPTO to applicants will also have metadata removed.
Is the DOCX file format suitable for long-term archival purposes?
By using DOCX, we are able to capture the structured text instead of an image-based presentation of data, which renders a specialized archival format unnecessary.
Is the DOCX file format subject to proprietary restrictions?
DOCX is simply a structured text format for documents. The ability to read/write in DOCX format is not proprietary.
There are several word processors that can create and save in DOCX format, including Google Docs, Microsoft Word 2007 or higher, Office Online, LibreOffice, and Pages for Mac.
DOCX is stable and governed by two international standards (ECMA-376 and ISO/IEC 29500).
Can I upload a single document in DOCX that includes specification, claims, and abstract?
DOCX is only available for utility non-provisional initial filings (limited to specification, claims, abstract for non-provisional utility applications) in EFS-Web. DOCX submissions in EFS-Web must be in separate documents, one each for specification, claims, and abstract. Multi-section documents (specification, claims, and abstract on one single document) is now available exclusively within Patent Center. Additionally, DOCX filing will be expanded in Patent Center to include provisional and 371 initial filings soon.
Is there a timeline for when users will be able to file responses and follow-on submissions in text?
Currently, the ability to file responses and follow-on submissions in DOCX format is tentatively planned for early 2019, and will be exclusively be available in Patent Center
- Quick Start Guides to assist with filing and retrieving in DOCX can be found at Submit DOCX and Retrieve DOCX
- For questions or assistance regarding DOCX filing, please contact the Patent Electronic Business Center (EBC) at 1-866-217-9197 or email@example.com