By Donald Zuhn --
In an email News Brief distributed today, the U.S. Patent and Trademark Office reminded stakeholders that starting at 12:01 am (ET) on January 17, the filing of new, non-provisional utility patent applications with specification, claims, and abstract in a non-DOCX filing format will incur a surcharge of up to $400. The Office noted that an Applicant will still have the option of providing a backup (or auxiliary) PDF version of a newly filed application with the DOCX version, and that there would be no fee associated with providing the backup PDF.
The Office indicated that the transition to the DOCX format is intended "to modernize [the Office's] patent application systems to improve user experience, provide applicants a more streamlined process, harmonize across country borders, and strengthen [the Office's] ability to examine applications quickly and effectively." The Office stated that it had "worked carefully with stakeholders to shape both the transition to DOCX as well as the timing," and that the Office's systems will "provide[] pre-prosecution checks that improve the robustness and reliability of patents."
Further information regarding the DOCX format can be found on the Office's DOCX webpage, and a video explaining "How to file your patent application documents in DOCX" can be found here. Questions regarding DOCX filing can be directed to the Patent Electronic Business Center at [email protected] or 866-217-9197.
USPTO has really lost its way, pushing the switch to PatentCenter despite numerous bugs and glitches that still have not been addressed and which have been brought to their attention repeatedly. PatentCenter has been down frequently so far since the switch and has caused practitioners to waste hours of time just trying to figure out how to pay fees or ensure a filing has been accepted by the system--routine tasks that were easily completed when EFS-web was available. The switch to DocX is also problematic for patent applicants, but the PTO does not care. Very sad to see how a formerly mostly sensible and responsible institution has become hostile and dismissive of its stakeholders' legitimate interests and concerns, to the detriment of those seeking to obtain US patents.
Posted by: Clyde | January 17, 2024 at 08:31 AM
From all the evidence, the PTO uses Microsoft's conversion software to ... wait for it ... convert your docx file to a pdf. Yes, the very format that you can't use for some reason. Whatever their software generates is the official submission, and if your μg became a mg, it's up to you to pore over the PTO-generated pdf and find it ... at the very moment that you're trying to file the application.
Stick to common fonts (e.g. Times Roman), and use MS Word to prepare the docx file, and chances are that you won't get bitten, but as time goes on there will be many permutations of word processor versions and the conversion software version (the PTO is already on v.19 of their program.) It's a fragile system that's bound to break sooner or later.
The PTO inexplicably refuses to implement the simple expedient of saving the uploaded docx file. The paranoids among us might want to print out the docx document, scan it, and submit the resulting graphics file as an appendix or supplement of some sort, in order to put the as-intended specification into the file history. (Or just file a pdf as usual, and pay the extra fee ... the clients won't mind a bit.)
Posted by: Jim Demers | January 17, 2024 at 08:03 PM
I can appreciate the need to update and upgrade the system, but frankly patent center is buggy and a huge time suck when it's acting up.The USPTO could help us by issuing their official Word template for us to use, which would streamline things and perhaps eliminate issues like errors in the paragraph numbering or weird hidden bookmark errors, etc. I have uploaded and had black pages show up as the viewable copy online. Definitely should not file after 8pm or else you run into the next day issue. I have paid double fees due to glitches in the payment system, of course however there are no refunds because only a govt agency gets away with this.
The customer first slogan is just a slogan. Patent attys are 90% of users and nomatter what we say, it won't derail what the agency wants to do.
Posted by: Kay | January 18, 2024 at 09:01 AM