United States: USPTO DOCX Transition Update

Our previous communications of September 17, 2021, November 19, 2021, and April 27, 2022 (each attached for your reference) provided information on the U.S. Patent and Trademark Office (USPTO)'s planned DOCX implementation for filing new patent applications and some of the options available to you. In our communication of September 17, 2021, we explained the different scenarios and our planned courses of action. We supplement that information with the following additional comments.

Recall that regular U.S. utility nonprovisional application filings will incur a $400 USPTO surcharge if not filed in DOCX format starting on January 1, 2023. While U.S. provisional, design, and national stage applications may also be filed in DOCX format starting on January 1, 2023, there is no USPTO surcharge if such applications are not filed in DOCX format.

On December 19, 2022, the USPTO announced that it is extending the currently available option to file an applicant-generated backup PDF (so-called "auxiliary PDF") application in addition to the DOCX format application for another 6 months (through June 30, 2023). See the USPTO Director's blog, available here: https://www.uspto.gov/blog/director/entry/top-three-helpful-tips-for1; see also the Federal Register Notice published on December 20th, available here: https://www.govinfo.gov/content/pkg/FR-2022-12-20/pdf/2022-27366.pdf

The USPTO reiterated that the filing of an auxiliary PDF is optional and does not incur additional USPTO fees. According to the USPTO, "[i]f 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." This is welcome news, which will help alleviate some concerns among stakeholders.

We therefore continue to recommend that you provide us with your regular U.S. utility nonprovisional applications in USPTO-compliant DOCX format and in PDF, so that we can file both documents in accordance with the USPTO's announcement.

If necessary, we will attempt to remedy any USPTO-indicated errors that would prevent the DOCX application from being accepted by the USPTO system. If such errors cannot be resolved and the DOCX application cannot be filed by the due date, we would then file only the PDF application even though doing so would incur the USPTO surcharge. However, we will not attempt to resolve any USPTO-indicated warnings in the DOCX application that would otherwise be accepted by the USPTO. In either situation, we will forward the USPTO's "feedback report" on the DOCX application to you so that you may evaluate any USPTO-indicated errors or warnings.

We also recommend that you visit the USPTO's DOCX web page (https://www.uspto.gov/patents/docx) to take advantage of the USPTO's DOCX templates available there and to review the USPTO's FAQ on DOCX filing. For example, the USPTO's "DOCX Template B" may be used to prepare new DOCX applications with the most common Specification sections and USPTO-compliant formatting. Please review the USPTO DOCX information available at the following USPTO web pages:

USPTO DOCX User Guide: https://www.uspto.gov/sites/default/files/documents/DOCX_QSG_Final.pdf

USPTO DOCX Section Headers: https://www.uspto.gov/sites/default/files/documents/DOCX_section_headers_May2022.pdfp>

USPTO DOCX Supported Fonts: https://www.uspto.gov/sites/default/files/documents/DOCX%20Supported%20Font%20List%20_4_15_20.pdfp>

USPTO DOCX Warnings and Errors: https://www.uspto.gov/sites/default/files/documents/DOCX_Feedback_Errors_and_Warnings.pdf

USPTO DOCX Best Practices: https://www.uspto.gov/sites/default/files/documents/Best_Practices_to_Avoid_Common_Warnings_and_Errors.pdf

We look forward to working with you on a smooth transition to DOCX application filing.