USPTO Delays Switch to DOCX Filings…Again

The USPTO first announced in August 2020 that it would be imposing a new fee for patent applications not filed in DOCX format beginning on January 1, 2022. After multiple extensions,  the USPTO announced that the deadline is now June 30, 2023.  

This comes after multiple other extensions: 

• The original deadline of January 1, 2022, as announced in August 2020
• An extension to January 1, 2023
• An extension to April 3, 2023, as announced in December 2022 

The USPTO claims that the switch to DOCX will have benefits both for the agency and users. It estimates that about 80% of filers already draft their documents in DOCX format, so the new protocol will eliminate the step of converting those DOCX files to PDF files. The new system also will detect common errors users make when they upload their documents — for example, unusual fonts, missing section headers, multiple claims in the same document, etc. The DOCX engine will automatically flag such errors and, depending on the error, require the user to correct it before submission. The USPTO also provides DOCX templates for submissions and responses. While this ostensibly is a courtesy to users, it will likely result in more uniformity among submissions for the USPTO. 

The original announcement was met with significant trepidation from practitioners, which may explain why the USPTO has extended the deadline multiple times. While filing patent applications in DOCX format seems simple enough in theory, the transition has been plagued by technical glitches in practice. Some of those technical glitches could even substantively impact the examination process, potentially affecting the rights of applicants and exposing practitioners to malpractice claims. 

The glitches in the system were severe enough to prompt an open letter to USPTO Director Kathi Vidal from a group of 117 patent practitioners in December 2022. The letter accused the USPTO of shoddy software development, “mangling” the content of submitted documents, making false statements to the Office of Management and Budget, and violating the Paperwork Reduction Act, among many other missteps. It concluded by asking Director Vidal to maintain the status quo for another six months and insinuated that, should the USPTO continue with its plans, the authors would consider a lawsuit under the Equal Access to Justice Act. 

The DOCX transition may be more of a headache for the USPTO than it anticipated, but to its credit, the agency seems to have been exceptionally responsive to criticism and eager to solve user problems. A patent practitioner reported in Patent Docs that the USPTO responded promptly when he raised issues, and it later claimed to have fixed the bug that was giving him trouble. The USPTO’s December 2022 announcement that the transition would be delayed until April 2023 came less than a week after the open letter referenced above was published. This could be merely a coincidence, but the timing certainly indicates that the two events are related. 

In the meantime, the USPTO recommends that practitioners attend one or more of its numerous DOCX training sessions to ensure that they are adequately prepared for April 3 — provided, of course, that the deadline is not extended further. 

The USPTO seems to be struggling to deliver a fast, efficient, and predictable patent prosecution process for practitioners, but you don’t need to rely on their efforts alone. See how you can supercharge your patent prosecution practice with Juristat Workflow Automation by scheduling a demo today.