[Federal Register Volume 87, Number 243 (Tuesday, December 20, 2022)]
[Notices]
[Pages 77812-77813]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-27366]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

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


Extension of Period To Allow Submission of a PDF With a Patent 
Application Filed 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) is 
continuing to modernize and streamline its patent application systems 
to support robust and reliable patent rights, speed the issuance of 
patents, and reduce the costs and barriers of global patent protection. 
The submission of patent applications in DOCX format facilitates the 
USPTO's ongoing efforts. The USPTO recognizes that, during the 
transition, some applicants have been hesitant to file patent 
applications in DOCX format. On April 28, 2022, the USPTO announced 
that, for a temporary period, ending on December 31, 2022, it was 
providing patent applicants with the option to submit an applicant-
generated PDF version of the application along with the DOCX file(s) 
when filing an application in Patent Center. Based on stakeholder 
requests, the USPTO is extending the temporary period during which 
patent applicants have 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 through June 30, 2023. To encourage 
greater adoption of DOCX so that the USPTO can move forward with its 
other modernization and harmonization efforts, there is no change to 
the January 1, 2023, effective date of the non-DOCX filing surcharge 
fee.

DATES: Duration: The option to submit an applicant-generated PDF of a 
patent application along with the DOCX file(s) when filing an 
application in Patent Center, as discussed in this notice, will be 
available through June 30, 2023.
    Fee applicability: The non-DOCX filing surcharge fee set forth in 
37 CFR 1.16(u) will go into effect on January 1, 2023.

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-Friday.

SUPPLEMENTARY INFORMATION: Filing in DOCX format eliminates the need 
for patent applicants to convert structured text to PDF format, 
improves patent application quality by providing content-based 
validations prior to submission, provides automated document indexing, 
allows for future reuse of content, and improves searching for patent 
applications. It is also necessary for planned, upcoming USPTO efforts 
to automate more of the patent application process, including through 
pre-examination of applications to put applications in better shape 
before they are examined by a patent examiner. It is also critical to 
reducing barriers and costs affiliated with global intellectual 
property (IP) protection by ensuring that the different IP systems can 
communicate, electronically, with one another.
    The USPTO appreciates the feedback and support from its 
stakeholders, including those who have switched to

[[Page 77813]]

filing patent applications in DOCX format. The feedback from 
stakeholders during this transition to a DOCX system has been extremely 
helpful to the USPTO in improving its systems. The USPTO is no longer 
seeing any errors being reported as a result of filing patent 
applications in DOCX format when applicants follow the guidance 
provided by the USPTO.
    The USPTO recognizes that, during the transition, some applicants 
have been hesitant to file patent applications in DOCX format for fear 
that certain technical information including formulas might not be 
accurately reflected in the DOCX version. Accordingly, in April 2022, 
the USPTO announced that, for a period of time ending December 31, 
2022, it was providing patent applicants with the option to submit a 
back-up applicant-generated PDF version of the application along with 
the DOCX file(s) when filing an application in Patent Center. See 
Filing Patent Applications in DOCX Format, 87 FR 25226 (Apr. 28, 2022). 
The USPTO believed that the initial period would encourage applicants 
to file in DOCX while ensuring that if any discrepancies were 
discovered, the back-up version could be used to correct the 
discrepancies. As with the DOCX version of the application, the 
applicant-generated PDF version also becomes part of the official 
record.
    The USPTO expresses its gratitude to those who have used DOCX 
during this period and have reported any discrepancies. That effort 
allowed the USPTO to engage in enhanced testing of its information 
technology systems, and improve its guidance, as more users filed in 
DOCX. Even though the USPTO is no longer receiving discrepancy reports 
from those who file in DOCX following the USPTO's guidance, based on 
stakeholder requests, the USPTO is extending the temporary period to 
submit applicant-generated PDFs through June 30, 2023.
    The USPTO reminds applicants that the option to submit an 
applicant-generated PDF version of the application is not available for 
applications filed via EFS-Web. The agency anticipates that more 
applicants will begin filing applications in DOCX format once the non-
DOCX filing surcharge fee becomes effective on January 1, 2023. 
Nevertheless, extending the temporary period during which patent 
applicants have the option to submit an applicant-generated PDF of the 
application along with the validated DOCX file(s) through June 30, 
2023, will provide applicants additional time 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 take place. Applicants are also reminded that they can 
file test submissions through Patent Center training mode to practice 
filing in DOCX. Information on filing application documents in DOCX and 
a link to the DOCX training sessions are available at www.uspto.gov/patents/docx.
    As discussed in the notice published on April 28, 2022, patent 
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 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. To 
avoid incurring additional fees for the PDF, applicants must follow the 
process for submitting an applicant-generated PDF (Auxiliary PDF) set 
forth in the quick reference guide available at www.uspto.gov/sites/default/files/documents/Aux_PDF_QRG_Final_2022.docx. The USPTO will 
continue to waive the petition fee under 37 CFR 1.17(f) for a petition 
under 37 CFR 1.182 that relies on an applicant-generated PDF that was 
filed in Patent Center during the temporary period as the source to 
make a correction to the record. The USPTO will include the applicant-
generated PDF in any certified copy of the application as filed, if the 
applicant-generated PDF remains part of the official record when 
applicant's request is processed. After the expiration of the temporary 
period (June 30, 2023), patent 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, such as an 
application size fee, as a result of filing the applicant-generated 
PDF.
    As a reminder, the USPTO published a final rule in the Federal 
Register that included a new non-DOCX filing surcharge fee, set forth 
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 
(Aug. 3, 2020). The USPTO later 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). The 
effective date of the non-DOCX filing surcharge fee now set forth in 37 
CFR 1.16(u) is not being delayed. The non-DOCX filing surcharge fee, 
which applies only to non-reissue (original), nonprovisional utility 
applications filed under 35 U.S.C. 111, including continuing 
applications, will become effective on January 1, 2023. Small and 
micro-entity discounts will apply.
    For more information regarding the filing of an applicant-generated 
PDF in Patent Center, including the options available for making 
corrections to the record, please see Filing Patent Applications in 
DOCX Format, 87 FR 25226 (Apr. 28, 2022).

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2022-27366 Filed 12-19-22; 8:45 am]
BILLING CODE 3510-16-P