[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]
BILLING CODE 3510-16-P