[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