[Federal Register Volume 86, Number 104 (Wednesday, June 2, 2021)]
[Notices]
[Pages 29571-29572]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-11256]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2021-0010]


Submitting Patent Applications in Structured Text Format and 
Reliance on the Text Version as the Source or Evidentiary Copy

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is in 
the process of transitioning to a system that supports submitting new 
patent applications in structured text, specifically DOCX format. 
Filing in structured text allows applicants to submit their 
specifications, claims, and abstracts in text-based format, thereby 
eliminating the need for applicants to convert applications into a PDF 
for filing. It also provides a flexible format with no template 
constraints and improves data quality by supporting original formats 
for chemical formulas, mathematical equations, and tables. The USPTO 
previously stated that for applications filed in DOCX, the 
authoritative document would be the accompanying PDF that the USPTO 
systems generate from the DOCX document. In response to public 
feedback, however, the USPTO now considers the DOCX document filed by 
the applicant to be the authoritative document. Accordingly, an 
applicant who files or has filed an application in DOCX may rely on 
that version as the source or evidentiary copy of the application to 
make any corrections to the documents in the application file. The 
USPTO will be hosting DOCX training sessions to provide more 
information, demonstrate how to file and retrieve DOCX files in Patent 
Center, EFS-Web, and PAIR, and answer any questions. Applicants can 
also file test submissions through Patent Center training mode to 
practice filing in DOCX. In addition, we will be offering listening 
sessions to gather feedback and suggestions to further improve DOCX 
features.

DATES: Effective date: June 2, 2021.

FOR FURTHER INFORMATION CONTACT: Mark O. Polutta, Senior Legal Advisor, 
571-272-7709, or Eugenia A. Jones, Senior Legal Advisor, 571-272-7727, 
of the Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patents.
    For technical questions related to submitting documents in DOCX 
format, please contact the Patent Electronic Business Center (EBC) at 
1-866-217-9197 (toll-free), 571-272-4100 (local), or [email protected]. The 
EBC is open from 6 a.m. to midnight, ET, Monday through Friday.

SUPPLEMENTARY INFORMATION: The USPTO is in the process of transitioning 
to a system that supports submitting new patent applications in 
structured text, specifically DOCX format. Application documents 
submitted in DOCX format will facilitate the examination and 
publication processes. This notice provides information on structured 
text filing. Specifically, the USPTO now considers the DOCX documents 
filed by applicants to be the authoritative document, otherwise 
referred to as the source or evidentiary copy of the application, for 
purposes of determining the content of the application as originally 
filed, should a discrepancy be discovered. This notice does not require 
patent applicants to make any changes to their practices.
    Currently, applicants may electronically file an application either 
by submitting PDF files or by submitting DOCX files. If an applicant 
submits DOCX files, the USPTO uses the DOCX files to generate PDF files 
prior to the actual filing of the application. The USPTO published a 
final rule on setting and adjusting patent fees on August 3, 2020. See 
Setting and Adjusting Patent Fees During Fiscal Year 2020, 85 FR 46932 
(Aug. 3, 2020). In addition to establishing a fee for applications not 
submitted in a DOCX format, the response to comment 54 in the final 
rule stated that for applications filed in DOCX, the authoritative 
document will be the accompanying PDF that the USPTO systems generate 
from the DOCX document. See id. at 46957.
    In response to public feedback, the USPTO has changed what will be 
the authoritative document. The USPTO is informing applicants that it 
now considers the DOCX documents filed by applicants to be the 
authoritative document, otherwise referred to as the source or 
evidentiary copy of the application. This change applies to all patent 
documents submitted in DOCX format, including DOCX submissions made 
prior to this notice.
    The source or evidentiary copy of the application is the version 
submitted to the USPTO by the applicant in one of the following 
formats: Paper, DOCX, or PDF when not accompanied by a DOCX version of 
the same. Applicants should not submit PDF versions they created when 
filing an application in DOCX, as they are unnecessary. If the 
applicant submits documents in DOCX along with PDF versions they 
created (not the auto-generated PDFs created by the USPTO), then the 
DOCX version will still be considered the source or evidentiary copy, 
and the applicant will be required to pay the non-DOCX surcharge fee.
    Applicants can rely on the DOCX version as the source or 
evidentiary copy in order to make any corrections to the record when 
any discrepancies are identified between the source or evidentiary copy 
and the documents as converted by the USPTO. Accordingly, during the 
filing process, applicants will be advised to review the DOCX files 
before submission rather than reviewing the USPTO-generated PDF 
version, as set forth in the August 3, 2020, final rule.
    However, applicants are advised to check the USPTO-generated 
versions as soon as practicable for any discrepancies or errors. Any 
discrepancies or errors that occur as a result of filing an application 
in DOCX format should be promptly brought to the attention of the 
USPTO. Applicants should initially contact the Patent EBC for 
investigation at 1-866-217-9197 (toll-free), 571-272-4100 (local), or 
[email protected]. Depending on the situation, applicants may need to file 
a petition under 37 CFR 1.181 in order to have the issue reviewed and 
addressed. This is consistent with current USPTO procedures for 
documents filed in patent applications.
    In this regard, the USPTO has a records retention schedule for 
documents it receives, including new patent applications and 
correspondence filed in patent applications. For example, applications 
filed in paper via mail or hand-delivery are scanned into the image 
file wrapper (IFW) or the Supplemental Complex Repository for Examiners 
(SCORE), as appropriate. In 2011, the USPTO established a one-year 
retention policy for patent-related papers scanned into the IFW or 
SCORE. See Establishment of a One-Year Retention Period for Patent-
Related Papers That Have Been Scanned Into the

[[Page 29572]]

Image File Wrapper System or the Supplemental Complex Repository for 
Examiners, 77 FR 3745 (Jan. 25, 2012). After the expiration of the one-
year period, the USPTO disposes of the paper unless the applicant, 
patent owner, or reexamination party timely files a bona fide request 
to correct the electronic record of the paper in IFW or SCORE. DOCX 
submissions will be treated similarly. Therefore, the procedure to 
correct any discrepancies or errors that occur as a result of filing an 
application in DOCX format will align with the established procedure 
for an applicant, patent owner, or reexamination party to request 
corrections to the electronic record when there is an error caused by 
the USPTO in scanning papers into the IFW.
    Applicants should promptly review the electronic record of an 
application and file any request to correct the electronic record based 
on the source or evidentiary copy as soon as possible after the 
document has been submitted to the USPTO. Applicants should not expect 
to have a request to correct the electronic record granted if the 
request is based on the source or evidentiary copy and it is filed more 
than one year after submission of the document. Documents submitted by 
applicants in PDF or DOCX in patent applications will be treated in a 
similar manner to papers that have been scanned into the IFW in that 
they may be disposed of after a period of time if they are the source 
or evidentiary copy.
    The USPTO's procedures regarding national security classified 
documents are unaffected by this notice. National security classified 
documents must be filed in the USPTO in paper format via hand-delivery 
to Licensing and Review or by mail in compliance with 37 CFR 5.1(a) and 
Executive Order 13526 of December 29, 2009, or in electronic format via 
the Department of Defense Secret internet Protocol Router Network 
(SIPRNET). See section 115 of the Manual of Patent Examining Procedure 
(MPEP, Ninth Edition, Revision 10.2019). National security classified 
documents filed electronically via SIPRNET are maintained at the USPTO 
in paper form; an electronic record of such documents is not 
maintained. Thus, all national security classified documents filed with 
the USPTO are maintained only in paper form, and the paper copies of 
these documents are the source or evidentiary copies.

Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2021-11256 Filed 6-1-21; 8:45 am]
BILLING CODE 3510-16-P