(Corrected September 1, 2019 to reflect that the telltale Microsoft Word file-type icons appear in the Patentcenter e-filing system, not in EFS-Web.)

USPTO presents patent practitioners with a choice of two filing paths — Microsoft Word and PDF.  If you e-file a Microsoft Word file, then that’s what USPTO wants.  If you want to use a word processor other than Microsoft Word, then you face two possible paths.  One path is that you save your patent application as a PDF.  USPTO has proposed that you would have to pay a $400 penalty for e-filing the PDF.  The other possibility is to export your patent application in a DOCX format from your non-Microsoft-Word word processor.  You would then upload the DOCX file to EFS-Web or to Patentcenter (in alpha-test), and EFS-Web or Patentcenter would render the file into a PDF.  You would then be expected to proofread the PDF carefully to detect the corruptions (and there would often be corruptions, documented here) introduced by USPTO’s failure to correctly handle DOCX files generated by word processors other than Microsoft Word.  Here is the adhesion contract that EFS-Web or Patentcenter asks you to agree to:

The PDF(s) have been generated from the docx file(s). Please review the PDF(s) for accuracy. By clicking the continue button, you agree to accept any changes made by the conversion and that it will become the final submission.

Again, if you wished to avoid this malpractice risk, you need merely take either of two precautions:

• purchase and use Microsoft Word, or
• pay the $400 penalty and submit a PDF format patent application.

The situation is that the rendering engine that USPTO uses to render a DOCX file into a PDF is the Microsoft Word rendering engine.  So by definition, the PDF that is generated from the DOCX file will be error-free if you used Microsoft Word to generate your DOCX file.  But if you used a word processor file other than Microsoft Word to generate your DOCX file, the rendering engine offers no assurance of rendering the document accurately.

USPTO disingenuously suggests that there is some uniform “DOCX standard” and that somehow all word processor files that have file names ending in “DOCX” will look the same when e-filed in EFS-Web or in Patentcenter, regardless of the particular word processor that was used to create the word processor file.  This is factually false.

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USPTO’s disingenuousness is highlighted by the icon that USPTO uses in Patentcenter to identify the type of file that the practitioner has uploaded.  You can see it three times in this screen shot.  

Yes, USPTO uses the Microsoft Word branded icon to identify the file type for the word processor file that the user has uploaded (that happens to have a “docx” file name extension).  For this particular screenshot, the DOCX files that you see are files that I created using Libre Office.  But did USPTO use a Libre Office branded icon for those files?  No!  USPTO used the Microsoft Word branded icon for those files.  You can see it right there in the screen shot, three times.

If USPTO were really dedicated to trying to accommodate users of word processors other than Microsoft Word, we would not be seeing the Microsoft Word icon three times in this screen shot.

There do exist plenty of truly generic icons for DOCX file types, but USPTO did not choose to use any of those truly generic icons.  Here are some of them:

Let’s see whether someone at USPTO who is responsible for Patentcenter reads this blog and decides to take corrective action.  Let’s see how long it takes for USPTO to change Patentcenter so that it uses an icon that is not Microsoft branded to identify the DOCX files that users upload to Patentcenter.

What would really be excellent is if USPTO were to stop using the Microsoft Word rendering engine in EFS-Web and Patentcenter to render DOCX files into PDF files.  I think the responsible thing would be for USPTO to use (for example) the Libre Office rendering engine to render DOCX files into PDF files.  I say this because I believe the Libre Office rendering engine actually comes much closer to complying with the relevant industry standards (ECMA-376 and ISO/IEC 29500) than does the Microsoft Word rendering engine.

You can see comments which people have submitted to USPTO’s proposed penalty for non-DOCX filings.

Unfortunately the way the Notice of Proposed Rulemaking is written, it mixes together many different issues. So it’s not easy to pick out the comments that particularly address the proposed penalty for non-DOCX filings.

Here are some comments that address this issue:

• Carl Oppedahl
• Dekel Patent Ltd
• Jeffrey Mote