If you’re considering filing a patent application, you should be aware of a new rule that will affect the way you file documents. Effective June 30, 2023, January 17, 2024 (updated) the United States Patent and Trademark Office (USPTO) requires that certain application documents be filed electronically in DOCX format. DOCX is a word processing file format based on open standards such as Extensible Markup Language (XML) and supported by many popular text editors.
Why DOCX?
The USPTO states that filing documents in DOCX format has many benefits for both applicants and agencies.
These purported benefits include:
- Increased productivity: Structured text does not need to be converted to PDF for archiving.
- Better data quality: Fewer conversion errors that can occur when converting to PDF.
- Interface – Identify common errors like formatting errors and provide instant feedback to avoid unnecessary delays in processing error/correction requests.
- Privacy – Automatically detects and strips metadata to ensure only relevant information is sent in the DOCX file.
- Quality Improvement – Checks content before submission and notifies of any issues that need to be fixed before prosecution.
- Ease of Use: Automatically index documents.
- Compatibility: Avoid the “Font not embedded” error, the most common problem when uploading a PDF file.
What documents are required in DOCX?
The USPTO requires that the following documents be submitted in DOCX format:
- specification
- claims
- abstract
- drawings
Requirement applies to new nonprovisional applications under 35 U.S.C. 111(a), including continuation applications (continuation, divisional, and continuation in part), that are subject to the priority of the previously filed application. This requirement does not apply to provisional applications, domestic (national stage) applications under 35 U.S.C.371, international (PCT) applications, or design applications.
The USPTO has provided two templates referred to by the patent office as DOCX Template A ( the *new* template) and DOCX Template B (the simplified template) using which the patent office will, during filing, automatically detect the specification, claims, abstract, and drawings section, but there is no requirement to use these templates.
What happens if you don’t submit a question in DOCX?
If you submit any of the requested documents in a non-DOCX format such as PDF or TXT, you will be required to pay an additional non-DOCX fee of up to $400 per document. The USPTO will waive the fee if you demonstrate that you cannot file your application in DOCX due to technical difficulties or other reasons beyond your control.
How do I submit a request in DOCX?
Patent application documents can be submitted in DOCX format via EFS-Web or the Patent Center. Both systems allow you to upload DOCX files directly or convert them from other formats using an online tool.
Conclusion
Filing in DOCX format is a new requirement that will impact many patent and professional applications starting January 17, 2024. The USPTO says this change will improve the efficiency and quality of patent searches and provide better service. However, this also incurs additional costs for non-compliance and may require some workflow and software adjustments.It is therefore advisable to familiarize yourself with the new regulations as early as possible and to prepare for the change. Although the patent office has continued to extend the enforcement date, users should be make themselves familiar with the docx filing requirements as soon as possible.