Patent Office Delays Non-DOCX Penalty Fees

The Patent Office is delaying the non-DOCX penalty fees it had said would go into effect at the beginning of 2023.

As part of its “modernization” efforts, the Patent Office has been pushing patent attorneys, agents, and pro se filers to use Patent Center instead of EFS-Web and to file in DOCX format instead of PDF.  I have previously written about some of the problems that has created.  Others have done so in much more detail and volume than me.

The Patent Office is pushing filers to use DOCX format instead of PDF because the Office claims it saves us the time and hassle of converting to PDF and because the Patent Center’s filing software can check DOCX files for common filing problems.

The few times I have tested Patent Center and filed DOCX documents, I have been disappointed.  The system warned me of problems that did not exist.  It never gave helpful feedback.  The most feedback it really gave was to auto-detect that my application had 3 independent claim and 20 claims in total.  I need to know this because it determines what fees apply.  However, two issues:

1. I already knew those numbers.  I usually write those numbers down before filing so that I can check that the Office’s filing system has properly calculated the fees; and
2. When it came time for Patent Center to calculate the fees, it prompted me to input the number claims in my application, rendering the auto-detect from earlier in the submission process seemingly unnecessary.

The biggest problem with the DOCX adoption is that Patent Center creates a PDF from the DOCX file that then becomes the official copy of the application.  That PDF, however, often would be inconsistent with the DOCX file.  For instance, when creating the official PDF, Patent Center frequently changes numbers, variables, and even operators in equations submitted in the original DOCX document.  The burden is on the uploader to check the PDF for consistency with the DOCX.  This is process requiring hours, however, and is not a practical activity when uploading finalized patent documents in an online environment that times out after inactivity.

The Patent Office has continually pushed penalizing applicants who did not include a DOCX file.  The Office was going to begin charging applicants $400 in non-DOCX penalty fees on January 1, 2022.  That was then delayed until January 1, 2023.  Thanks in part to efforts by Ptaaarmigan and a last-minute protest letter signed by several hundred attorneys, the Office has now delayed implementation of the penalty until April 3, 2023.

I suspect we will see a major revision – or at least an announcement of a revision – before April 3 which either allows filers to continue using PDF or withdraws the penalty fees.