As a part of our continuous efforts to modernize and streamline our patent application systems, applicants have the ability to file patent application-related documents in DOCX format through Patent Center. Patent Center registered users may file the specification, claims, abstract and drawings 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 2007 or higher, Google Docs, Office Online, LibreOffice and Pages for Mac. As an open standard format, DOCX offers a safe and stable basis for authoring and processing intellectual property documents. Currently, the USPTO is accepting DOCX for these submission types .
DOCX benefits
- 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.
- Application management: DOCX data allows future reuse of content and delivering new powerful features such as improved searching for patent applications and submissions.
- Privacy: provides automatic metadata detection (e.g. author 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.
How does the DOCX engine work?
- Warnings and Errors: DOCX data is analyzed and feedback is generated for common mistakes and errors. While warnings (indicated by a triangle icon) will not prevent a user from filing an application, users are encouraged to review applications thoroughly before submission. Errors (indicated by an X icon) must be corrected before submission.
- Headings: DOCX data is further used to provide automatic doc code detection by analyzing headings of sections. DOCX templates are available in the DOCX Resources section with some common section headings.
Applicants can file test submissions through Patent Center training mode, located at the bottom of the Patent Center dashboard to practice filing in DOCX.
DOCX templates
These templates are not required but are instead guides for filing new submissions and responses.
- DOCX Initial Filing Template: This is a simplified template for new filings with the most common specification sections. In Patent Center this template will automatically detect the Specification, Claims, Abstract and Drawings sections.
- Response Template: This is a simplified template for responses and amendments with the most common sections. In Patent Center this template will automatically detect the Response/Amendment Cover Letter, Specification, Claims, Abstract, Drawings, Remarks, and Conclusion sections.
Frequently asked questions (FAQs)
What documents and submission types can I file without incurring a non-DOCX surcharge?
The surcharge pertains to new utility non-provisional applications filed under 35 U.S.C. 111(a) for specifications, claims, and abstracts that are not filed in DOCX. This includes Continuations, Divisional, and continuation-in-part (CIP) applications. Drawings are accepted in DOCX format, but can still be submitted in PDF without incurring a surcharge. Other documents and submission types may still be filed using PDF documents. See FY2020 Final Patent Fee Rule - Delay of Effective Date and Final Rule and FY2020 Final Patent Fee Rule for more information.
If I want to file a preliminary amendment on the same day as my initial filing of a new utility application under 35 U.S.C. 111(a), does the preliminary amendment need to be in DOCX format to avoid the non-DOCX surcharge?
In accordance with 37 CFR 1.115(a), a preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application. Thus, if a preliminary amendment is filed on the same day as the application, the amendment must be in DOCX format to avoid the surcharge. Users can now optionally upload preliminary amendment documents in DOCX format as part of the initial submission of a new utility application under 35 U.S.C. 111(a). A preliminary amendment filed after the filing date of the application will not incur the surcharge because it is not part of the original disclosure of the application and thus is not required to be in DOCX format.
How can I file a preliminary amendment on the same day as my initial filing of a new utility application under 35 U.S.C. 111(a) to avoid the non-DOCX surcharge?
If you want to submit a preliminary amendment that is considered part of the original disclosure of the application (37 CFR 1.115(a)) and avoid the non-DOCX surcharge, you should file the preliminary amendment in DOCX format on the same day using the “Is a Preliminary Amendment in DOCX format being filed” section under the Upload Documents section and selecting the radio button to “Yes” or you may file it as a follow-on submission in the application.
If I file a new utility nonprovisional application in a foreign language, does it have to be in DOCX format to avoid the non-DOCX surcharge?
The non-DOCX surcharge applies to the specification, claims, and abstract filed in a new utility nonprovisional application filed under 35 U.S.C. 111(a). If you need to file a U.S. application in a foreign language to secure a filing date, then it is the foreign language application (e.g., specification, claims, abstract, and any drawings) that is the original disclosure of the application. If the specification, claims and/or abstract are not filed in DOCX format, then the surcharge would be due if the application is a utility application filed on or after 1/17/2024. Please keep in mind that filing an application in a foreign language is intended for emergency situations only. See MPEP 608.01, subsection V.
Do I have to use Microsoft Word to create my DOCX file?
DOCX files can be created in Microsoft Word 2007 or higher, Google Docs, Office Online, LibreOffice, and Pages for Mac.
How do I report and/or correct any perceived discrepancies in my file?
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 concerns. 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. If you need to make a correction to your application that is supported by the validated DOCX version of the application, you can file a petition under 37 CFR 1.181. Applicant should not expect to have a request to correct the electronic record granted if the request is based on the validated DOCX version and it is filed more than one year after submission of the document.
If you filed your application with the optional applicant-generated backup PDF (Auxiliary PDF), and need to make a correction to your application that is supported by the applicant-generated PDF (rather than the validated DOCX version), you should file a petition under 37 CFR 1.182. The fee for this type of petition, normally required under 37 CFR 1.17(f), will be waived.
Alternatively, if you file an application in DOCX format that includes a proper priority claim under 37 CFR 1.55 or proper benefit claim under 37 CFR 1.78, you may be able to address discrepancies resulting from filing an application in DOCX format, based on the incorporation by reference provisions of 37 CFR 1.57(b), instead of filing a petition.
Can you tell me more about the feedback document I receive when filing in DOCX format using Patent Center?
When you file an application in DOCX format, you will receive a feedback document before you submit your application. The feedback document instantly shows common warnings and errors in the application, so they can be corrected before submitting the application. Warnings will not prevent an application from being submitted; however, errors must be corrected. The feedback document can help prevent unnecessary delays in the processing and examination of your application by highlighting certain issues within your application prior to completing the filing of your application. Should you wish to practice filing, you can use the Patent Center training mode, located at the bottom of the Patent Center dashboard. The training mode will help you become familiar with the Patent Center tool and its enhanced features, including the feedback document, without saving or submitting application and customer information.
Is using the DOCX format secure?
- The DOCX format is an international standard defined under ECMA-376 and ISO/IEC 29500 and approved by the Library of Congress.
- 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 Patent Center for PDF submissions and confirms the DOCX file cannot be changed post-submission.
- For security, the system rejects DOCX with macros (DOCM), and implements virus detection software to prevent malware.
What happens to the metadata in DOCX files?
Can I upload a single document in DOCX that includes the specification, claims, abstract and drawings?
DOCX submissions in Patent Center may be filed in separate documents, one each for specification, claims, abstract and drawings or as a multi-section document. Multi-section DOCX processing is available for utility non-provisional initial filings (specification, claims, abstract and drawings in one single document).
Which uploaded documents do I have to review to make sure no mistakes were made?
A Federal Register Notice was published June 2, 2021 on Submitting Patent Applications in Structured Text Format and Reliance on the Text Version as the Source or Evidentiary Copy. Please go to the summary of FRN 6/2/2021 for more information.
Will my patent applications which include chemical structures, equations, etc. be loaded correctly in DOCX?
DOCX services fully support equation editing software, such as MathML, and chemical structure editing software, such as ChemDraw. The USPTO has conducted extensive DOCX testing with files that contain chemical structures and mathematical formulae and determined that Patent Center is able to store and process DOCX files with high fidelity. Further, after thorough extensive DOCX testing with files that contain chemical structures and mathematical formulae, we determined that they are rendered correctly when they use an approved font. Please see our supported fonts list in the DOCX Resources section.
Is requiring the DOCX format just adding another step in the process for applicants?
Actually, it's the opposite. 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 our system will do that automatically.