The Dawn of DOCX: Modernization Underway at the USPTO
Posted on Sep 7, 2021 in Articles
On June 2, 2021, the United States Patent and Trademark Office (USPTO) announced that its previously PDF-based filing system will transition to one supporting DOCX format submissions.  The announcement comes as part of a push to modernize USPTO procedures and produce higher quality patents.
What are the changes?
Previously, the USPTO considered the authoritative document on record to be either the PDF filed by the applicant with the USPTO or the USPTO-generated PDF from a DOCX filing. However, accepting the USPTO-generated PDF as authoritative discouraged many agents and attorneys wary of conversion errors from previously filing in DOCX format. With the latest changes, the DOCX document itself will serve as the authoritative document. The change not only avoids formatting errors that can occur when converting to PDF, but also “provides a flexible format with no template constraints and improves data quality by supporting original formats for chemical formulas, mathematical equations, and tables.”
Additionally, certain common filing irregularities may be detected faster than before in the text-based format, giving applicants more time to respond to a Notice of Missing Parts or otherwise correct the application. In certain instances, DOCX data will be analyzed, and applicants may be notified almost instantly with a warning if certain errors are detected, such as a missing heading, claims with improper dependency, missing line or claim numbers, or even punctuation errors. Ultimately, however, the USPTO stated that requests to correct the record will likely not be granted if “the request is based on the source or evidentiary copy and it is filed more than one year after submission of the document.”
Regarding the submission process using the USPTO’s EFS Web, the user must still identify where the specification, claims, abstract, and drawings appear in the PDF. However, one DOCX document containing all these sections may be uploaded through the USPTO’s Patent Center for utility nonprovisional applications, and the sections will be auto-identified for the user. For those still desiring to file utility nonprovisional applications in paper format or PDF, starting January 1, 2022, an extra fee will be incurred by applicants not filing in DOCX format. Large entities are expected to incur a surcharge of $400, while small entities and micro entities will incur surcharges of $200 and $100, respectively.
What is DOCX?
DOCX is the file format successor to the traditional Doc file format extension given to documents created in Microsoft Word or exported by other word processing programs. According to the USPTO, DOCX files can be created in Microsoft Word 2007 or higher, Google Docs, Office Online, LibreOffice, and Pages for Mac. Functionally, the USPTO changes allow applicants to submit in word processing format rather than PDF form.
Why Do I Care?
For applicants and patent owners, the USPTO states DOCX data permits the USPTO to conduct more thorough searches and improves the quality of patent applications through the USPTO’s warning system. Increased search quality supports the legitimacy of existing patents. The changes aim for a goal of higher quality patents to decrease the possibility of later invalidation via Post Grant Review or Inter-Partes Review. While more thorough searches may result in additional prior art cited against applications during examination, potential applicants are advised to work with patent professionals to obtain a patentability analysis prior to filing and determine how to respond to USPTO Office Actions most effectively.
For attorneys and agents, the DOCX filing system increases filing efficiency, eliminates the common non-embedded font error encountered with PDF filings, and even allows reuse of previous content. Further, equation and chemical structure editing software are supported in DOCX format, facilitating inclusion of mathematical or chemical formulas in applications. While the warning system does highlight certain filing irregularities instantaneously, applications should still be thoroughly proofread prior to submission, as the USPTO has stated that requests to correct the prosecution record after a document has been on file for over a year are not likely to be granted.
How can I learn more?
For attorneys and agents, training sessions through the USPTO on how to transition to the DOCX system have already begun. Upcoming training sessions can be found at https://www.uspto.gov/about-us/events/patents-docx-filing. For applicants wanting to learn more about their chances of patentability in view of the USPTO’s new modernization efforts, please visit www.caesar.law.
 Submitting Patent Applications in Structured Text Format and Reliance on the Text Version as the Source or Evidentiary Copy, 86 Fed. Reg. 29571-72 (June 2, 2021).