One of the fundamental requirements in the design of an important system like USPTO’s system for e-filing patent applications is that the system should not force the customer to purchase any particular proprietary software as a precondition of use of the system.
USPTO’s initiative to try to force customers to file patent applications in DOCX format is an example of a failure to satisfy that requirement. Continue reading
Until now, it has been optional for a practitioner to file a US patent application in DOCX format rather than in PDF format. But USPTO now proposes to charge a $400 penalty for filing a patent application in non-DOCX format. This is a very bad idea, for reasons that I will discuss in detail. Only if USPTO were to make fundamental changes in its way of receiving DOCX files would it be acceptable for USPTO to impose a penalty for filing in a non-DOCX format.
USPTO needs to follow WIPO’s example, permitting the practitioner to file a “pre-conversion format” version of a patent application along with the DOCX file. In the event of some later problem with USPTO’s rendering of the DOCX file, the practitioner would be permitted to point to the pre-conversion format, which would control in the event of any discrepancy.
A year ago or so, the USPTO started a beta-test of its system in which docx files play an important role. In the best-test system, an applicant was permitted to file a patent application in docx format rather than PDF format. Likewise, the applicant had the opportunity to receive some documents from the USPTO in docx format in addition to PDF format. Our firm was among the beta-testers of this docx system.
Now, as of September 10, 2017, these features have been made available to all USPTO customers (not merely the beta-test users). This offers a new Best Practice for reporting to clients.
If you want to be trendy, modern, and up-to-date, you can now e-file “docx” files at the USPTO. If you do this, not only will you be trendy, modern, and up-to-date, but you will also likely encounter fewer instances in the future in which you need to request a Certificate of Correction or a corrected publication. Read on to learn how to be trendy, modern, and up-to-date. Continue reading