By: Mehdi Sheikerz, Partner
DOCX is a word processing file format based on open standards and is supported by word processing applications.
According to the USPTO, as a part of their continuous efforts to modernize and streamline their patent application systems, applicants have had the ability to file patent application-related documents in DOCX format through EFS-Web, Private PAIR, and Patent Center (USPTO’s new (available in Beta) user interface for enhanced user experience). DOCX filing of the specification, claims, abstract and drawings are currently available to all EFS-Web Registered and Private PAIR users. Patent Center registered and unregistered users may file the specification, claims, abstract and drawings in DOCX format.
According to the USPTO, some DOCX benefits may be increased efficiency by eliminating the need to convert documents in to a PDF for filing, provide automated document indexing when filing, and eliminate the non-embedded font error, the most common obstacle in uploading a PDF, by uploading a file with supported fonts.
Since the documents would be filed in editable form including metadata (e.g. author information, comments), the USPTO will also be implementing automatic metadata detection and removal to support submission of only substantive information in the DOCX file.
It may be advisable to confirm that DOCX documents do not include metadata before submission to the USPTO and supportable fonts including supportable mathematical equations should be confirmed.
To encourage applicant to adopt filing in DOCX, the USPTO has introduced a new non-DOCX filing surcharge of $400 for non-DOCX filings as part of the FY2020 Final Patent Fe Rule. The non-DOCX filing surcharge is planned to be effective as of January 1, 2022.
The surcharge is being introduced for new utility non-provisional applications filed under 35 USC 111(a) for specifications, claims, and abstracts that are not filed in DOCX. Other documents and submission types may still be filed using PDF documents.
In the interim, the USPTO outreach efforts addressing customer concerns to transition to this new process includes providing free training sessions These free USPTO training sessions provide a comprehensive overview of how to file and retrieve DOCX files in Patent Center, EFS-Web, and PAIR. Each session takes about an hour and includes time for questions, as well as an opportunity to use the Patent Center’s training mode to practice DOCX filing.
You can Learn more about filing in DOCX and about upcoming one-hour training sessions at https://www.uspto.gov/about-us/events/patents-docx-filing.
Staas & Halsey LLP is preparing to start filing in DOCX.
If you have any question, please contact us.