The USPTO has been flirting with implementing a fee for filing patent specifications in pds format for the past 16 months. Originally set to begin on January 1, 2022, and then delayed until January 1, 2023, the PTO has once again delayed the effective date of the DOCX requirement until April 3, 2023. As of the writing of this article, the effective date of the fee has not been extended again. Here are some things you should know to be ready for the DOCX surcharge:
- It’s not a nominal amount! At $400 for a large-entity, it adds roughly 20% to the filing fees for your typical patent application.
- The surcharge fee only applies to §111(a) filings - utility non-provisional applications. As of the initial implementation, it does NOT apply to provisional applications, 371 national phase applications, or design applications. That means you can still file provisionals, national phase, and design applications in pdf format without incurring an additional fee.
- How do you avoid the fee? Submit the specification, claims, abstract, and abstract of the initial filing in DOCX format.
- Auxiliary PDF Copy – If you don’t trust the PTO to import your DOCX without introducing errors, the USPTO offers the option (at least until June 30, 2023) to submit an auxiliary PDF version of your DOCX filing. This document is the same one you would file if you were submitting your application in the normal PDF format. It can be used for evidentiary purposes in case there is a discrepancy in the DOCX version.
- Look at your feedback document – When you upload your DOCX file in Patent Center, the system automatically generates a feedback document you can download. The feedback document will identify the sections and headings included, the number of independent and dependent claims (and any multiple-dependent claims), and identify any other errors or warnings. Use this opportunity to perform a final sanity check on the document to make sure there isn’t anything missing or there aren’t any expensive mistakes lurking in your submission.
- Fonts! As anyone who has filed a PDF with the USPTO knows, non-embedded fonts are one sure-fire way to have your submission refused by EFS/Patent Center. Unfortunately, the DOCX filing system has its own font issues. While the most common fonts are acceptable in the DOCX submission, there are some obscure fonts that the USPTO does not allow to be present in the submitted document. This has come up for me in the context of translations done by foreign companies using non-standard fonts. These fonts can be, for example, in a first page header (you could still have fonts in the hidden first page header even if you don’t have the “first page different” box checked), or in the line numbers (change the font of your “Line Number” or “Normal” style to fix this). The feedback document will identify where the non-standard fonts are, though it doesn’t do a great job identifying them if the fonts are hidden in an unused header.
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