On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application filing. A new final rule establishes that the $400 fee for filing patent specifications, claims, and abstracts (not including design, plant, or provisional applications) in a format other than DOCX will not be required until April 3, 2023.
The USPTO has supported filing in DOCX format for over 5 years. However, uptake was initially slow. In August 2020, the USPTO published a final rule setting the effective date of the fee to be January 1, 2022, and then published another final rule delaying the fee until January 1, 2023. Just a few days prior to the fee being put in force, which in practice would compel most applicants to file in DOCX format, it has been pushed back another three months.
The USPTO's DOCX rollout has been problematic from its beginning. The issues are not in the format itself, which has a number of advantages over the current standard of filing in PDF. Instead, many practitioners have experienced problems with the USPTO's DOCX intake engine. Carl Oppedahl pointed out instances where the USPTO had corrupted or changed equations in specifications. Our own experience with trying to upload DOCX via the USPTO's electronic filing system in early 2020 produced significant problems, including bogus errors relating to fonts and section headings. To its credit, the USPTO responded promptly when we raised these issues and has contended that it has fixed the bugs in its software that caused what we came up against.
But reports of various DOCX issues continued. Numerous letters were sent by groups of practitioners to the USPTO regarding these issues, including one on the need for protective PDF filings to accompany DOCX filings at no additional cost. Protective PDF versions of specifications contain the applicant's intended disclosure to which the inventors legally declare inventorship. They serve as an authoritative version of the application in cases where the USPTO mangles the corresponding DOCX submission.
On December 20, 2022, the USPTO published a notice that protective PDF filings would be permitted until June 30, 2023, but the DOCX fee would still go into effect on January 1, 2023. In response, 117 patent professionals signed an open letter to USPTO Director Vidal providing several example files that result in the USPTO rewriting parts of specifications submitted in DOCX format. The letter also accuses the USPTO of violating the Paperwork Reduction Act by improperly shifting its costs and burdens to the public. Other organizations, such as the AIPLA and IPO may have also contacted the USPTO about DOCX issues. It is likely that a combination of these efforts caused the USPTO to reverse course on the January 1, 2023 deadline.
Faith in the USPTO's IT systems are at a low point. Public PAIR and Patent Center were giving intermittent errors during routine activities for at least part of December 2022. For about one week before and/or during the holidays, image file wrappers for some applications could not be viewed. These defects have been seen off and on for months, but became endemic right as practitioners were working on their year-end filings before (hopefully) heading out on vacation.
The USPTO's DOCX transition has been and continues to be fraught with legal and technical glitches. Protective PDFs should be permitted at no additional cost and on an indefinite basis. The USPTO's portal software needs to be more reliable. Based on our experience with DOCX two years ago, the USPTO has a proclivity to launch new systems without adequate testing. The current delay of the $400 fee for another three months is a good start, but only an ill-fitting band-aid on these fundamental problems.
