USPTO’s [Proposed] non-Docx penalty

The USPTO has proposed a $400 (large entity) penalty surcharge for initial non-provisional patent application documents submitted in non-docx formats. The penalty for small entities would be $200 and $100 for those who qualify for micro entity.  Currently, the proposed fee only affects non-provisional utility patent applications filed under 35 USC 111, however one can anticipate this rule to be propagated across the board in another year to so. The proposed fee is scheduled to go into effect for the 2020 financial year. The USPTO is accepting comments to the fee proposal by September 30, 2019.

The proposal states, “this surcharge will apply to filings that are submitted in an electronic document, such as a PDF, that is not saved in the DOCX format. It will also apply to filings that are submitted non-electronically, in addition to the existing paper filing surcharge. The surcharge is proposed to be introduced for specifications, claims, and abstracts. The submission in DOCX format will facilitate improvements in the efficiency of patent operations.”

The website states:

As a part of the eMod effort, filing formats for patent applications have been expanded to include DOCX format. The eMod Text Pilot Program was conducted August 2016 to September 2017 to gather feedback and continuously improve the new feature. In September 2017, text filing was made available to all EFS-Web Registered and Private PAIR users. Users who file in text will be able to access their submissions and Office actions in DOCX and XML formats, along with the regular PDF format. Currently, USPTO is only accepting DOCX for specific initial application parts for new utility nonprovisional applications:

    • Specification
    • Claims
    • Abstract

As of September 20, 2018, 2,000 filings have been submitted in DOCX format.

Background of the program

Launched in 2015, the eCommerce Modernization (eMod) Project aims to improve the electronic application process for patent applicants by modernizing the USPTO’s filing and viewing systems. Recent improvements include implementing structured text functionalities. Structured text allows applicants to more easily submit their documents in text-based documents, rather than having to create PDF documents. This streamlines the application and publication processes for both the applicants and examiners. The Office tested the capabilities of structured text within EFS-Web and PAIR with the eMod Text Pilot Program, which ran from August 2016 until September 2017. The pilot was successful and many improvements were made based on feedback from applicants, which included independent inventors, law firms, and corporations. Structured text features are now available to all EFS-Web registered and Private PAIR users, and include the ability for applicants to file structured text via EFS-Web, and access structured text submissions, structured text office actions, and XML downloads via Private PAIR.

To encourage the filing of more applications in structured text, a required fee surcharge is proposed for applications that do not include DOCX format. This will accelerate the adoption of DOCX to realize a variety of benefits. Both the USPTO and applicants will see increased efficiencies from encouraging DOCX filings. Based on a USPTO survey, over 80 percent of applicants author their patent applications in DOCX in the normal course of business. Filing in structured text allows applicants to submit their specifications, claims, and abstracts in text-based format, and eliminates the need to convert structured text into a PDF for filing. Applicants can access examiner Office actions in text-based format which makes it easy to copy and paste when drafting responses. The availability of structured text also improves accessibility for sight-impaired customers, who use screen reading technology.