[Federal Register Volume 88, Number 108 (Tuesday, June 6, 2023)]
[Notices]
[Pages 37036-37037]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-11910]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2023-0025]
Extension of the Option for 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 previously announced that, for a
temporary period, it was providing patent applicants with the option to
submit an applicant-generated PDF version of an application along with
the DOCX file(s) when filing the application in Patent Center. This
temporary period was scheduled to end on June 30, 2023. In response to
stakeholder requests, the USPTO is extending the option until further
notice.
DATES: Duration: The option to submit an applicant-generated PDF of a
patent application along with the validated DOCX file(s) when filing an
application in Patent Center, as discussed in this notice, is being
extended until further notice.
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 searches for patent
applications. DOCX format is also necessary for planned, upcoming USPTO
efforts to automate more of the patent application process, including
[[Page 37037]]
the pre-examination of the application to ensure it is in good
condition for examination by a patent examiner.
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 (April 28, 2022) (April 2022 Notice). The goal of providing such
an option was to encourage more applicants to begin filing patent
applications in DOCX format. In particular, the USPTO anticipated that
allowing applicants to submit a back-up PDF version of the
application--without incurring additional fees--for a temporary 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. In December 2022, the USPTO extended this
temporary period through June 30, 2023. See Extension of Period To
Allow Submission of a PDF With a Patent Application Filed in DOCX
Format, 87 FR 77812 (December 20, 2022).
In response to stakeholder requests, the USPTO is extending, until
further notice, 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.
The April 2022 Notice stated that the ``applicant-generated PDF . .
. 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'' and that ``[i]n 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.'' However, in
view of stakeholder requests, the USPTO will now keep copies of the
applicant-generated PDF as part of the permanent record, regardless of
whether a petition is filed. For example, for granted patents, the
USPTO will keep copies of the applicant-generated PDF for at least 25
years after the patent grant before transferring it to the National
Archives and Records Administration.
With the changes detailed above, patent applicants choosing to
submit an applicant-generated PDF with the validated DOCX file(s) when
filing an application in Patent Center will have an ongoing safeguard
should any unexpected conversion discrepancies occur during the filing
process. 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. Applicants are also reminded that they
can file test submissions through the 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 April 2022 Notice, patent applicants who choose
to submit an applicant-generated PDF with the validated DOCX file(s)
when filing an application in Patent Center 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 as the source to make a correction to the record.
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 review the guidance in the April 2022
Notice.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-11910 Filed 6-5-23; 8:45 am]
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