As a part of our USPTO application systems modernization effort, filing formats for patent applications have been expanded to include DOCX format. DOCX filing was made available to all EFS-Web Registered, Private PAIR users, and Patent Center users. Users who file in DOCX text will be able to access their submissions and office actions in DOCX and XML formats, along with the regular PDF format. Currently, the USPTO is only accepting DOCX for the following application parts for new utility nonprovisional applications:
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.
Why file in DOCX?
- Increased efficiencies—This widespread format eliminates the need to convert structured text into a PDF for filing.
- Higher data quality—accepting original data instead of a PDF image reduces conversion errors.
- Smarter interface—DOCX helps the USPTO automatically detect and provide instant feedback analysis to detect common errors that may otherwise delay 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—Automatic metadata detection and scrubbing ensures only the substantive information of the DOCX file is retained at the USPTO.
- Compatibility—Uploading a DOCX with supported fonts eliminates the non-embedded font error, the most common error in uploading a PDF.
How does the DOCX engine work?
- Warnings and Errors—DOCX data is analyzed and feedback is generated for common mistakes and errors. While warnings will not prevent a user from filing an application, users are encouraged to review applications thoroughly before submission.
- Headings——DOCX data is further used to provide automatic doc code detection by analyzing headings of sections.
Frequently Asked Questions (FAQs)
Can an application filed in DOCX and still have drawings, prior art, etc. be submitted as PDF without a surcharge?
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 filed under 35 USC 111. The USPTO is working to add DOCX capabilities to other filing types including follow-on documents.
What happens to the metadata in DOCX files?
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.
Outgoing DOCX documents (i.e. Office actions) from the USPTO to applicants will also have metadata removed.
Can I upload a single document in DOCX that includes the specification, claims, and abstract?
DOCX submissions in EFS-Web must be in separate documents, one each for specification, claims, and abstract. Multi-section documents processing is only available for utility non-provisional initial filings (specification, claims, and abstract in one single document) exclusively within Patent Center.
Is there a timeline for when users will be able to file responses and follow-on submissions to existing applications in DOCX?
Currently, the ability to file responses and follow-on submissions in DOCX format is tentatively planned for early 2020, and will be exclusively be available in Patent Center.
Is requiring the DOCX format just adding another step in the process for applicants?
Actually, its 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.