[Federal Register Volume 87, Number 82 (Thursday, April 28, 2022)]
[Notices]
[Pages 25226-25228]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-09027]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2022-0002]


Filing Patent Applications in DOCX Format

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) recently 
announced a delay in the effective date of the surcharge fee for 
certain patent applications that are not filed in DOCX format until 
January 1, 2023. During the period before the non-DOCX filing surcharge 
fee becomes effective, the USPTO is encouraging applicants to begin 
filing patent applications in DOCX format. To address concerns some 
applicants have raised and to allow applicants to get acclimated to the 
process of filing applications in DOCX format, the USPTO is providing 
applicants with the option, on a temporary basis, to submit an 
applicant-generated PDF version of the application along with the DOCX 
file(s) when filing an application in Patent Center.

DATES: 
    Applicable date: April 28, 2022.
    Duration: The option to submit an applicant-generated PDF of the 
application along with the DOCX file(s) when filing an application in 
Patent Center, as discussed in this notice, will be available through 
December 31, 2022.

FOR FURTHER INFORMATION CONTACT: Mark O. Polutta, Senior Legal Advisor, 
Office of Patent Legal Administration, at 571-272-7709; or Eugenia A. 
Jones, Senior Legal Advisor, Office of Patent Legal Administration, at 
571-272-7727.
    For technical questions about submitting documents in DOCX format, 
please contact the Patent Electronic Business Center (EBC) at 1-877-
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 published a final rule in the 
Federal Register that included a new non-DOCX filing surcharge fee, set 
forth

[[Page 25227]]

in 37 CFR 1.16(u), with an effective date of January 1, 2022. See 
Setting and Adjusting Patent Fees During Fiscal Year 2020, 85 FR 46932 
(August 3, 2020) (Patent Fee Setting final rule). This surcharge fee is 
due for any non-provisional utility application filed under 35 U.S.C. 
111 (other than a reissue application) on or after the effective date, 
when the specification, claims, and/or abstract do not conform to the 
USPTO requirements for submission in DOCX format. The USPTO recently 
announced it was delaying the effective date of this fee until January 
1, 2023. See Setting and Adjusting Patent Fees During Fiscal Year 2020, 
86 FR 66192 (Nov. 22, 2021). This will enable the USPTO to perform 
additional monitoring and evaluating of its information technology 
systems, and to give applicants more time to adjust to filing patent 
applications in DOCX format.
    The USPTO continues to work with its stakeholders to transition to 
the DOCX format. Through this notice, the USPTO is providing applicants 
with the option to submit an applicant-generated PDF of the application 
along with the validated DOCX file(s) when filing an application in 
Patent Center, from the effective date of this notice through December 
31, 2022 (the temporary period). This option will not be available for 
applications filed via EFS-Web. This will allow applicants to gain 
confidence in the reliability and accuracy of the USPTO system when 
filing applications in DOCX format, and safeguard the applicant should 
any conversion discrepancies have taken place.
    Patent Center is the new tool for the electronic filing and 
management of patent applications that will eventually replace EFS-Web 
and the Patent Application Information Retrieval (PAIR) system. Patent 
Center offers a number of benefits to applicants. For example, when 
filing documents in DOCX in Patent Center, applicants do not have to 
manually separate the sections of the document into the specification, 
claims, and abstract. Additional information on Patent Center is 
available at www.uspto.gov/patents/apply/patent-center.
    The DOCX User Guide posted on the USPTO website explains that 
during the filing process, an applicant initially uploads a DOCX 
file(s) containing the specification, claims, and abstract. The DOCX 
file(s) undergoes preliminary validation, in which metadata is removed, 
non-substantive changes (e.g., acceptance of track changes in initial 
filings, removal of comments and bookmarks) may be made, and a 
validated DOCX file(s) is created. In addition, a feedback document is 
generated to provide warnings, identify common errors, such as 
formatting errors, and provide instant feedback to the applicant to 
prevent unnecessary delays in processing. In order to improve 
processing efficiency and provide an enhanced user experience for 
stakeholders, the USPTO system currently creates a consistently 
formatted PDF version of the specification, claims, and abstract during 
the filing process that will be made available both before filing and 
in the application file after the application has been filed. By 
transitioning to DOCX the applicant benefits from improved application 
quality and management as described at: https://www.uspto.gov/patents/docx. The USPTO continues to evaluate how best to implement changes to 
the format of application files used during examination based on DOCX 
submissions.
    The USPTO previously published a notice which sets forth that the 
USPTO considers the validated DOCX file(s) submitted by the applicant 
to be the authoritative document and that applicants may rely on the 
validated DOCX file(s) as the source or evidentiary copy of the 
application to make any corrections to the documents in the application 
file. See Submitting Patent Applications in Structured Text Format and 
Reliance on the Text Version as the Source or Evidentiary Copy, 86 FR 
29571 (Jun. 2, 2021). Thus, applicants already have the ability to rely 
on the validated DOCX file(s) they submitted to correct any errors or 
discrepancies that result from the USPTO's conversion of the DOCX 
file(s) to a PDF(s). If there is an error or discrepancy in the record 
that resulted from filing an application in DOCX format, the applicant 
should promptly notify the EBC at 1-866-217-9197 (toll-free), 571-272-
4100 (local), or [email protected] so the EBC can investigate the issue(s).
    Applicants who choose to submit an applicant-generated PDF with the 
validated DOCX file(s) when filing an application in Patent Center 
during the temporary period will not have to pay any additional fees, 
such as an application size fee, as a result of filing the applicant-
generated PDF, and, on petition, will be able to rely on the applicant-
generated PDF if a discrepancy occurs during the filing process. Please 
note that if an applicant makes changes to the DOCX file(s) prior to 
filing the application as a result of the validation process, then the 
applicant should ensure that the applicant-generated PDF corresponds to 
the revised DOCX file(s). Once the non-DOCX filing surcharge fee 
becomes effective on January 1, 2023, applicants who submit an 
applicant-generated PDF with the validated DOCX file(s) will need to 
pay the non-DOCX filing surcharge fee and any other additional fees as 
a result of filing the applicant-generated PDF. As December 31, 2022, 
approaches, the USPTO will evaluate whether there is a need to extend 
the temporary period beyond December 31, 2022, and will inform the 
public of any extension of the temporary period.
    Under this temporary new process of allowing applicant to 
optionally submit the applicant-generated PDF, the USPTO has created a 
new document description for the optional applicant-generated PDF 
submitted with the DOCX file(s) during the temporary period. This new 
document description is ``Auxiliary PDF of application,'' and the 
corresponding document code is AUX.PDF. If filing an applicant-
generated PDF in Patent Center, it should be a single PDF and contain 
all the sections being filed in DOCX format. Use of this document 
description by applicants will facilitate recognition of the document 
in the application file and will avoid confusion with the 
specification, claims, and abstract that are to be used during 
examination and publishing.
    As stated above, applicants can rely on the validated DOCX file(s) 
as the source or evidentiary copy to make corrections to the record 
when any discrepancies are identified between the source or evidentiary 
copy and the documents the USPTO has converted. Applicants may need to 
file a petition under 37 CFR 1.181 to make a correction to the record, 
which is supported by the validated DOCX file(s). See 86 FR 29571. 
However, if a correction to the record is needed due to an error or 
discrepancy that is not supported by the validated DOCX file(s), but is 
instead only supported by the applicant-generated PDF filed during the 
temporary period, the applicant should file a petition under 37 CFR 
1.182 that identifies how the applicant-generated PDF supports the 
requested correction to the record. In addition, such a petition under 
37 CFR 1.182 must be accompanied by an amendment to the specification, 
claims, or abstract to correct the record as desired, unless such an 
amendment was previously submitted. Amendments to the application must 
comply with 37 CFR 1.121. The USPTO will waive the fee under 37 CFR 
1.17(f) for this petition when an applicant is relying on an applicant-
generated PDF, filed in Patent Center during the temporary period, as

[[Page 25228]]

the source to make a correction to the record. As stated above, this 
will allow applicants to gain confidence in the reliability and 
accuracy of the USPTO system when filing applications in DOCX format, 
and safeguard the applicant should any conversion discrepancies have 
taken place.
    The applicant-generated PDF that accompanies a DOCX filing will not 
become part of the permanent record unless a petition is filed 
requesting the USPTO to correct the record in view of the applicant-
generated PDF. In the absence of such a petition, the USPTO will 
dispose of the applicant-generated PDF, and all copies thereof, after a 
retention period of at least three years after the patent grant or 
abandonment of the application.
    Applicants are strongly encouraged to review their applications, 
including the USPTO-generated PDF, shortly after filing the application 
to identify any errors or discrepancies in the record, as discussed 
above. The applicant should file any necessary petition to correct the 
record early in prosecution and promptly after discovering any errors 
or discrepancies.
    As an alternative to filing a petition, applicants may be able to 
correct discrepancies resulting from filing an application in DOCX 
format by relying on a proper priority or benefit claim. A proper 
priority or benefit claim under 37 CFR 1.55 or 37 CFR 1.78 to a prior-
filed application that is present on the filing date of the application 
is considered an incorporation by reference of the prior-filed 
application as to any inadvertently omitted portion of the 
specification or drawing(s), subject to the conditions and requirements 
of 37 CFR 1.57(b). Therefore, in some instances, discrepancies 
resulting from filing an application in DOCX format may be addressed by 
amending portions of the specification pursuant to the incorporation by 
reference provisions of 37 CFR 1.57(b), in lieu of a petition. The 
amendment should be identified as an amendment under 37 CFR 1.57(b), 
and it must comply with 37 CFR 1.57(b) and 37 CFR 1.121.
    The USPTO continues to host training sessions on filing documents 
in DOCX. Information on filing application documents in DOCX, as well 
as information on how to submit an applicant-generated PDF and a link 
to the DOCX training sessions, is available at www.uspto.gov/patents/docx.

Kathi Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2022-09027 Filed 4-27-22; 8:45 am]
BILLING CODE 3510-16-P