USPTO Delays Transition to DOCX (Again)

By Michael Borella --

On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application filing.  A new final rule establishes that the $400 fee for filing patent specifications, claims, and abstracts (not including design, plant, or provisional applications) in a format other than DOCX will not be required until April 3, 2023.

The USPTO has supported filing in DOCX format for over 5 years.  However, uptake was initially slow.  In August 2020, the USPTO published a final rule setting the effective date of the fee to be January 1, 2022, and then published another final rule delaying the fee until January 1, 2023.  Just a few days prior to the fee being put in force, which in practice would compel most applicants to file in DOCX format, it has been pushed back another three months.

The USPTO's DOCX rollout has been problematic from its beginning.  The issues are not in the format itself, which has a number of advantages over the current standard of filing in PDF.  Instead, many practitioners have experienced problems with the USPTO's DOCX intake engine.  Carl Oppedahl pointed out instances where the USPTO had corrupted or changed equations in specifications.  Our own experience with trying to upload DOCX via the USPTO's electronic filing system in early 2020 produced significant problems, including bogus errors relating to fonts and section headings.  To its credit, the USPTO responded promptly when we raised these issues and has contended that it has fixed the bugs in its software that caused what we came up against.

But reports of various DOCX issues continued.  Numerous letters were sent by groups of practitioners to the USPTO regarding these issues, including one on the need for protective PDF filings to accompany DOCX filings at no additional cost.  Protective PDF versions of specifications contain the applicant's intended disclosure to which the inventors legally declare inventorship.  They serve as an authoritative version of the application in cases where the USPTO mangles the corresponding DOCX submission.

On December 20, 2022, the USPTO published a notice that protective PDF filings would be permitted until June 30, 2023, but the DOCX fee would still go into effect on January 1, 2023.  In response, 117 patent professionals signed an open letter to USPTO Director Vidal providing several example files that result in the USPTO rewriting parts of specifications submitted in DOCX format.  The letter also accuses the USPTO of violating the Paperwork Reduction Act by improperly shifting its costs and burdens to the public.  Other organizations, such as the AIPLA and IPO may have also contacted the USPTO about DOCX issues.  It is likely that a combination of these efforts caused the USPTO to reverse course on the January 1, 2023 deadline.

Faith in the USPTO's IT systems are at a low point.  Public PAIR and Patent Center were giving intermittent errors during routine activities for at least part of December 2022.  For about one week before and/or during the holidays, image file wrappers for some applications could not be viewed.  These defects have been seen off and on for months, but became endemic right as practitioners were working on their year-end filings before (hopefully) heading out on vacation.

The USPTO's DOCX transition has been and continues to be fraught with legal and technical glitches.  Protective PDFs should be permitted at no additional cost and on an indefinite basis.  The USPTO's portal software needs to be more reliable.  Based on our experience with DOCX two years ago, the USPTO has a proclivity to launch new systems without adequate testing.  The current delay of the $400 fee for another three months is a good start, but only an ill-fitting band-aid on these fundamental problems. 

Comments

[Dan Feigelson]

Mike, I will be shocked if the PTO moves ahead with this docx fiasco, because, as Carl explained in detail in this blog post (https://blog.oppedahl.com/?p=8681), the PTO has been lying about docx for years, and as explained in the 117 practitioner letter to which you linked (of which I'm a signatory), the PTO has repeatedly cheated on its admin law obligations.

Bottom line is the PTO has not been up front with the public about docx, ever, "docx" doesn't operate in the way or do what the PTO says it does, and if this goes to court, the PTO will lose (and some people within the PTO will likely look very, very foolish).

If indeed the PTO has a real reason for needing text-based filing, then hopefully the result of this episode will be a *transparent* process in which the PTO explains to the public what its actual needs are and why it thinks those are its need. There are some very smart people, as well as some very computer-savvy people, among the community of inventors and patent practitioners, I'm betting that if the PTO is forthright about this, a solution that's satisfactory to all can be found.

Or it can just save everyone's time and money and buy WIPO's ePCT software, which beats the pants off of EFS/PAIR/PatentCenter.

[Derek Freyberg]

I think you're overly kind to the PTO on this one - I think they only pulled back at this late date because of the 23 December letter to the Director, spearheaded by David Boundy.
To me, and I think to many others, it's as simple as "whatever it is the applicant files must be the record copy of the application". That to me means that the accepted format for electronic filing must be an internationally accepted standard, which PDF is and DOCX (with or without PTO "validation" - which, of course, is not validation, but rather a rewriting of the application) very definitely is not.
If the PTO wants text, let it ask politely for text and offer us a reason, such as a filing fee reduction, for complying with that request. But the PTO's ham-handed approach to dealing with applicants and their representatives thus far gives me little hope that anything other than the threat of litigation will stop DOCX.

[kotodama]

Whew, now the blog gets a reprieve on changing its name to Patent DOCX for a while.

[Connor]

Thank you for bringing attention to this issue. Also David Boundy deserves many thanks for highlighting this and other issues with PTO practices, for example: https://ipwatchdog.com/2022/07/19/study-scarlet-powers-attorney-uspto-rulemaking-part-ii/id=150256/

I hope all these efforts to encourage the PTO to do better are eventually successful.

[Potato Head]

Echoes of USPTO trying to ram through their ill-conceived rules limiting applicants to 2 continuation applications. The IP profession owes a debt of gratitude to inventor Triantafyllos Tafas for killing that monstrosity in the courts.

[skeptical]

PH - entirely agree.

[skeptical]

Boundy has provided an encore at Patently-O.

[David Boundy]

Dear Mike --

> The issues are not in the format itself, which has a number of advantages over the current standard of filing in PDF.

Your technological understanding is not accurate. DOCX is inherently incompatible with the purposes for which the PTO proposes it. We explained those problems in a notice and comment letter in 2019, https://www.uspto.gov/sites/default/files/documents/Comment_Seventy_Three_Patent_Practitioners_092719.pdf Carl Oppedahl wrote an exhaustive explanation of DOCX at https://blog.oppedahl.com/wp-content/uploads/2022/12/20221225-fools-errand-4.pdf

There are two separate problems,

First, DOCX is a very "loose" standard. The DOCX standard allows extensions and subsetting, and leaves many parameters "implementation defined." NO "intake engine" can ever reliably intake DOCX's with the necessary correctness and reproducibility, because DOCX is inherently unstable.

The second problem is the PTO itself. In response to our “Seventy-Three Practitioners” letter, the PTO rewrote comment after comment. For the really hard comments, the PTO just skipped them. It's a familiar pattern—in rulemaking, the PTO rewrites many comments, and omits answering many more, and simply lies to claim exemptions from various laws and oversight proceedings.

Another recent example is the CLE rule, a rule by the PTO's chief ethics officer. The legal deficiencies (including several overt lies) are outlined in two of the public comment letters, https://www.uspto.gov/sites/default/files/documents/Comment_CLE_Guidelines_Boundy.pdf and https://www.uspto.gov/sites/default/files/documents/AIPLA_Letter_to_USPTO_on_CLE_Guidance_010721_FINAL.pdf

Even this week's notice rescinding the CLE rule has several overt lies, directed to avoiding work the PTO would otherwise have to do. (Even rescinding a rule has procedural requirements. They’re pretty minimal, but the PTO (with the signoff of OED) lied to get out of them. Apparently lying is such an ingrained habit that the PTO knows no other way to do business.)