With the advancement in technology, the USPTO has made continuous efforts to modernize the patent filing process and embrace digital filing methods. One such initiative is the acceptance of applications in DOCX file format, replacing the PDF format.

In the year 2020, the USPTO announced the DOCX filing program. The USPTO has delayed the effective date of the non-DOCX filing fee until January 17, 2024.  Patent applications not filed in DOCX form will incur an additional official fee after the DOCX program comes into force.

Most US practitioners and stakeholders are opposed to the DOCX program predominantly due to associated risks. Although the USPTO claims that the DOCX program will be beneficial, there is still justifiable apprehension within the US patent fraternity.

According to the USPTO the DOCX format is beneficial when compared to the PDF format for the following reasons:

  1. Increased efficiency: eliminates the need to convert structured text into a PDF for filing.
  2. Higher Data quality: reduces conversion errors that can occur when converting to a PDF file.    
  3. Application Management: DOCX data allows future reuse of content and delivering new powerful features such as improved searching for patent applications and submissions.
  4. Privacy: provides automatic metadata detection (e.g. author and comments) and removal features to support the submission of only substantive information in the DOCX file.
  5. Improved application quality: provides content-based validations pre-submission, identifying issues up front and allowing for them to be addressed before examination begins.
  6. Ease of use: provides automated document indexing.
  7. Compatibilty: eliminates the non-embedded font error, the most common obstacle in uploading a PDF, by uploading your file with supported fonts.

If the DOCX program is actually important and beneficial to filers, then why are most stakeholders opposing it strongly?

The perspective of stakeholders is completely different from that of the USPTO; they consider this program as inefficient due to the following reasons:

  1. Compatibility and technical challenges: The information can be omitted or changed when the DOCX is converted into a USPTO document. The text may change, specifically in patent applications related to chemical formulas, mathematical equations, and/or other symbols. In addition to that, it can also lead to potential formatting issues.
  2. Time consuming: The reviewer has to check the documents both at the time of filing and thereafter.
  3. Increased cost: As IP practitioners may have to put in extra effort to ensure the correctness of filing documents, it may lead to an increased professional fee for the Applicant.
  4. There is no evidence to determine who made the textual error.
  5. File Size limitations: The maximum size limit imposed by the USPTO is 10 MB for DOCX submissions. Complex or intensive applications may exceed the limit of 10 MB for DOCX submission. In such a scenario, the documents are required to be divided into multiple files. This could increase the risk of errors and confusion.

Conclusion

The USPTO’s DOCX filing requirements definitely bring numerous advantages. However, the associated risk factors cannot be neglected. Before mandating this requirement, the risk factor must be addressed by the USPTO. The pros and cons must be considered by the USPTO and the filers to protect the applicant’s rights. The USPTO is indeed listening to the concerns of the stakeholders and making efforts to ease the transition.

Source:

https://www.uspto.gov/patents/docx

https://www.uspto.gov/blog/director/entry/you-spoke-we-listened-easing

Author: Preeti Sharma

author
Anand Barnabas

Practice Head - Patent - Mechanical & Automotive

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