How law firms and corporations are dealing with USPTO’s non-DOCX penalty

Some firms and corporations are trying to figure out what to do about the USPTO’s DOCX initiative (the $400 non-DOCX penalty) that came into effect on January 17, 2024.  Other firms and corporations have already decided what to do about the DOCX initiative.  In recent days I surveyed firms and corporations about their present approaches to the DOCX initiative.  How many law firms have written to their clients, telling them that the firm refuses to take the risks of filing in DOCX?  How many firms and corporations have decided not to file in DOCX format (meaning that they have decided to pay the non-DOCX penalty)?  How many firms and corporations have decided to file in the DOCX-plus-auxiliary-PDF path?  How many firms and corporations have decided to file in the DOCX-alone path?  Over 150 law firms and corporations responded to the survey.  Read on to see the survey findings.

By way of background, as of January 17, 2024, the would-be filer of a US nonprovisional utility patent application (a so-called “111a application”) has no choice but to select from among three filing paths:

• • the legacy PDF filing path that filers have followed for the past twenty years;  or
  • a DOCX-plus-auxiliary-PDF filing path;  or
  • a DOCX-and-no-auxiliary-PDF filing path.

The legacy PDF filing path incurs a penalty of $400 (or $160 for small entities and $80 for micro entities).  A filer that wishes to avoid the penalty must follow one or the other of the two DOCX filing paths.

The USPTO started beta-testing its DOCX initiative in 2018.  (Our firm was one of the first beta-testers.)  The USPTO has by now presented more than one hundred and fifty webinars, trying to convince customers to file in DOCX.  One assumes the reason for such an enormous number of webinars is that the uptake percentage for DOCX filings is lower than what the USPTO wanted.

Who are the respondents?  I told the respondents that I plan to maintain in confidence the names of the responding law firms and corporations.  I told the respondents that I plan to release the survey responses only in the aggregate.  I will say that among the respondents are many, many law firms whose names every reader would recognize instantly.  Some of the largest and most respected US patent firms are among the respondents.  Among the respondents are several very well-known pharma and biotech companies that do large numbers of patent filings.

Which paths are law firms and corporations actually following?  One of the first questions in the survey was:

In later questions we will get more specific, but first, in the most general terms, what is your firm or corporation’s general sense about adoption of the USPTO’s DOCX e-filing paths?

In response to this question, 50% of respondents said “we generally plan to continue filing in PDF as in the past, avoiding filing our patent applications in DOCX.”  38% of respondents said “we generally plan to do what USPTO asks, namely filing our patent applications in DOCX.”  12% of respondents said “our general plans do not fall into either of the above categories.”

We can compare these numbers to responses that I received in April of 2023 (blog article) from attendees at CLE webinars as to their plans about filing in DOCX.  In April of 2023, around 30% of respondents said they “probably will not” file in DOCX.  Around 25% of respondents said “yes we probably will do many DOCX filings” and another 10% said they “probably will do a few DOCX filings”.

In April of 2023 the USPTO had not yet started charging the non-DOCX penalty, and at that time, 30% said they would not file in DOCX.  One might expect the imposition of the non-DOCX penalty would cause some of those filers to switch to DOCX, but the opposite has occurred — now in February of 2024, the fraction of filers choosing legacy PDF (instead of DOCX) has increased from around 30% to around 50%.

Auxiliary PDF.   One of the two available DOCX filing paths is “DOCX-plus-auxiliary-PDF”.  Respondents were asked:

If you do plan to (at least sometimes) file a non-provisional utility US patent application in DOCX, what are your plans regarding the use of an “auxiliary PDF” file with the DOCX file?

Here are the responses:

• • 34 percent of respondents answered “We mostly do not plan to file in DOCX, so the discussion of ‘auxiliary PDF’ mostly does not apply to us”.
  • 47 percent of respondents answered “We may sometimes file in DOCX, and if we do, this will only be with the use of an ‘auxiliary PDF’ file”.
  • Eight percent of respondents answered “We have made plans about DOCX but they do not fall neatly into any of the above categories”.
  • Six percent of respondents answered “We have not yet finalized our plans about DOCX”.
  • Three percent of respondents answered “We may sometimes file in DOCX, and we do not expect to do it with an ‘auxiliary PDF'”.
  • Two percent of respondents answered “We may sometimes file in DOCX, and we may sometimes do it without any ‘auxiliary PDF’ file”.

What are law firms telling their clients?  136 respondents were law firms (as distinguished from corporations).  They were asked:

Have you written to some of your clients to tell them about the USPTO’s DOCX initiative?

30 percent responded “yes we have written to at least a few of our clients to tell them about USPTO’s DOCX initiative”.

28 percent responded “yes we have written to most of our clients to tell them about USPTO’s DOCX initiative”.

42 percent responded “no we have not written to our clients to tell them about USPTO’s DOCX initiative.”

Law firms telling clients about use of “no auxiliary PDF”.  The law firms who have written to their clients about the USPTO’s DOCX initiative were asked:

Have you told some or all of your clients that you will decline to file using the “DOCX-and-no-auxiliary-PDF” path?

16 percent responded “no we have not told this to our clients”.

14 percent responded “yes we have told all of our clients that we will decline to file using the ‘DOCX-and-no-auxiliary-PDF’ path”.

17 percent responded “yes we have told at least some of our clients that we will decline to file using the ‘DOCX-and-no-auxiliary-PDF’ path”.

One reason that the percentages just mentioned do not add up to 100% is that this question had an option for free-text individual responses.  Here are some of the individual free-text responses:

• • We have highly recommended [clients] always file a PDF auxiliary but we will respect a client’s specific informed decision to file DOCX without one.
  • We have raised our rates for filing in DOCX to make it non-economical for our clients to insist on DOCX.
  • We have told all of our clients that there are two options, DOCX with or without auxiliary PDF paths, and let the clients choose one of the two options.
  • We warned clients of the risks and they have thus far agreed to file legacy PDF.
  • We would never tell clients that we won’t use the USPTO’s preferred path.
  • While we recommend strongly against DOCX filings, we give clients the option.

Telling clients that the firm declines to file in DOCX.  The law firms were asked:

Have you told some or all of your clients that you will decline to file using any filing path other than the “legacy PDF” filing path?

Nine percent responded “yes we have told all of our clients that we will decline to file using any filing path other than the ‘legacy PDF’ filing path”.

15 percent responded “yes we have told at least some of our clients that we will decline to file using any filing path other than the ‘legacy PDF’ filing path”.

24 percent responded “no we have not told this to our clients”.

One reason that the percentages just mentioned do not add up to 100% is that this question permitted individual free-text responses.  Individual free-text responses included:

• • We have given our clients the option of accepting the risk themselves, in the case they demand that the DOCX path be utilized.
  • We have told all of our clients that there are two options, DOCX path and legacy PDF filing path with $400 of non-DOCX surcharge, and let the clients choose one of two options.
  • We’ve received client directives not to use DOCX.
  • Partners have told their clients about DOCX, risks, etc., and clients have decided how we should file their applications (either in DOCX or not in DOCX, paying the penalty and submitting an auxiliary PDF).
  • Depends on the client.
  • Each attorney is handling this on their own, client by client.
  • Filing paths have been discussed with some of our clients and we’ve given them the option of how to proceed.  Legacy PDF filing path has been the option chosen by clients with whom we have discussed.
  • For those clients we have raised this issue with, we have told them we will file using [legacy] PDF and why.

Who will pay the $400 (or $160, or $80) non-DOCX penalty?  Law firms were asked:

For filings in which you end up paying the $400 (or $160 or $80) non-DOCX penalty, do you plan to bill this USPTO fee to the client?

Sixty-two percent answered “Yes we plan to bill the non-DOCX penalty fee to the client”.

Twenty percent answered “We think it is unlikely we will end up paying the non-DOCX penalty fee very often in our patent applications”.

Fifteen percent answered “We may or may not bill the non-DOCX penalty fee to the client depending on the circumstances”.

Two percent answered “We plan to absorb the non-DOCX penalty fee, not billing it to the client”.

One percent answered “none of the above”.

Has USPTO been trustworthy?  Perhaps the most telling (and discouraging) finding in the survey is the response to this question:

To what extent do you feel the USPTO provides trustworthy information to help your firm or corporation evaluate risks and best practices for filing in DOCX?

69% of respondents answered “We feel the USPTO has failed to do a good job of disclosing risks of filing in DOCX”.

27% of respondents answered “We feel the USPTO has disclosed some but not all risks of filing in DOCX”.

One percent of respondents answered “We feel the USPTO has fully disclosed any risks of filing in DOCX”.

One percent of respondents answered “We feel there are no risks of filing in DOCX”.

Two percent of respondents answered “none of the above”.

Free-text additional comments.  Respondents were invited to share additional thoughts:

Please feel free to share other thoughts about USPTO’s DOCX e-filing initiative.

Here are some of the free-text additional comments:

• • Again, the USPTO has taken it upon themselves to promulgate rules that are detrimental to applicants.
  • As has been documented, the USPTO has been untruthful and unresponsive to Applicant concerns throughout the process of forcing this new requirement. The Applicant community has no reason to trust anything the USPTO says on this matter.
  • Aside from the obvious and well discussed risks of filing in DOCX, I’m also amazed that the USPTO can force applicants (or filers) to use one company’s software (i.e., Microsoft Word).
  • At the present time, we will absorb the cost of filing in PDF in the interest of ensuring what we file is exactly as what is received by the USPTO.
  • BAD idea!
  • [listserv members] have done a great job enumerating the risks.
  • Even if you file application DOCX, if filed with a preliminary amendment that is not DOCX, the PTO charges the $400.
  • Even laypeople, upon hearing that the USPTO is demanding editable files, say, “This sounds like a bad idea.”
  • I am very disappointed in the USPTO’s failures to incorporate constructive feedback from patent practitioners in designing and updating the USPTO’s platforms for patent and assignment filings. It reflects an indifference to valid concerns about the integrity of the patent process that is, frankly, not appropriate for an agency tasked with overseeing that process.
  • I can’t pass on the cost and use WordPerfect, which can generate both DOCX and PDF, so I intend to file both.
  • I contract with 12 law firms for patent prosecution. So far, only two of these attorneys has chosen to file in DOCX;  the balance will use the Legacy PDF process.
  • I do not understand the reticence for adopting DOCX format.
  • I feel that the USPTO has found a way to make a lot of money off of companies and firms who feel the need to continue to file in the traditional PDF format in order to preserve the original state of the patent application on record.
  • I find filing in DOCX easy.  It shows where mistakes are made which you can correct before submitting.
  • I like the USPTO in generally, but am very disappointed with them on this topic.
  • Why would anyone think DOCX is a good idea?
  • I think the USPTO needs to do a better job of communicating where it thinks there is an advantage. Is there improvement in printing? Is there improvement in searching? Is there a reduction in storage costs? Where there are improvements the non-DOCX fee should be folded into those costs (Publication Fee, Search Fee …). I think there needs to be a better understanding about the options that are available for PDF. The current PDF format used by the USPTO is image based. There are other options for PDF, that preserve and preserve paragraph structure, which could address the advantages that USPTO sees in DOCX. For me it doesn’t much matter because I use Microsoft Word.
  • If we were filing numerous biotech or chemical related applications, our answers would be different.
  • If you’re filing a very generic text-based application then one of the [DOCX] options provided by the USPTO might make sense.  However, if you have complicated figures, math formulations, chemical structures, and characters in non-English fonts then there doesn’t appear to be any good way, short of the legacy [PDF] filing that provides assurances that what your file is what will be the document of record.
  • In my current practice I strongly urge my inventors to file in PDF and pay the fee. I would have hoped that USPTO would have chosen a neutral or open standard because this currently biases practitioners to use ( = buy & maintain) office platforms of one particular favored company – Microsoft.
  • Had [USPTO] selected open-source document and image standards, there would be no appearance of apparent favoritism; the current “look” is that one or more [people] paid off their connections in the USPTO …
  • In this process the USPTO has been deliberately ignorant about the risks posed by DOCX failures. The people at the USPTO pushing this and other initiatives have no knowledge or understanding of patent law. And I am convinced this is by design. The operations people are completely separate from the legal people. This avoids any messy consideration of intellectual property laws and regulations.
  • It feels as if DOCX e-filing is just another source of income [for the USPTO]. It seems as if with change in management, the new people wanted to force something new into place to show that the new people must be doing their job because systems have been updated. I believe a huge problem is that staff that has the skills to build upon the existing EFS-Web and PAIR systems was not hired. To save face, the PTO has not disclosed all of the issues, problems and bad things now happening and that have been happening with DOCX.
  • It is difficult to be sure whether the DOCX and the PDF version have differences.
  • It is immensely disappointing to see that the PTO has not appreciated the potentially devastating impacts of this initiative. And even worse, doesn’t seem to care.
  • It is not good at all.  Moreover, the so-called auxiliary PDF is not good because it is a low-resolution image, and worse, for no technical reason!
  • There is no reason to have the PDFs of so low resolution, other than malice.
  • It stinks, to be polite.
  • It’s insane and inane.
  • Our behavior will be client specific and [will] vary by individual attorney.
  • Our clients primarily have mechanical inventions, so many of the conversion errors [that have been] flagged are not anticipated to occur with our new utility filings.  Accordingly, we have filed DOCX + PDF to avoid the extra filing fee.
  • Our outside counsel will file both DOCX & PDF per our SOP.
  • The best practices for our firm suggest it’s we either file an auxiliary PDF with the DOCX or decline to file in DOCX altogether.
  • See “The Scream” by Edvard Munch. The actions of the USPTO have been incompetent, at best.
  • Since the USPTO IT infrastructure continuously fails to perform as promised and/or its design is poorly developed, I have zero trust in the USPTO that DOCX will be a reliable format for accurately recording patent applications.
  • Small entities will be filed using legacy PDF and fee.
  • The docx issues, especially the Preview issues, need to be resolved ASAP.
  • The PTO messes up so many things that it is hard to trust them.  And when things go wrong it is the practitioner/client (especially the little guys – my clients) that suffers.
  • The USPTO could have been more responsive to the concerns that have been expressed to it about the DOCX program.
  • The USPTO DOCX e-filing initiative exhibits a typical complete lack of concern for the USPTO customer base … .
  • The USPTO generally tries to do the “right thing” for the vast majority of its stakeholders, but unfortunately, the USPTO leadership has in the past treated some of its stakeholders as more important than others of its stakeholders.
  • The USPTO has made numerous assurances that DOCX filing is error free, which is obviously a tall order and likely (as documented) incorrect.
  • Changing versions/updates to the patent center software as a whole is wonky with things seemingly randomly not working, working incorrectly, but there does not appear to be many options. As such, we have been discussing the risks of filing DOCX periodically. As part of our filing workflow we check the feedback document and make changes where appropriate and then prepare of the auxiliary PDF. We perform additional checking of certain parts of the application with particularity (particularly formulas). We have also consulted with clients about DOCX filing to understand their thoughts and willingness to accept known risks and our process versus the costs of the non-DOCX fee. All clients thus far have been willing to accept those risks (versus filing non-DOCX and paying the fee).
  • The USPTO should be ashamed of themselves for not listening to the valid and well-thought concerns of the Patent Bar regarding the DOCX initiative.
  • The USPTO’s DOCX e-filing initiative is unreliable and inefficient for patent applicants.
  • [The USPTO’s] lack of transparency, especially in the face of repeated questions, is deeply disappointing.
  • [The USPTO has] failed to allow preliminary amendments to be filed in DOCX but for cases that need them with the initial application we are stuck paying the fee since there is no other option available.  Patent Center capabilities do not match or line up with the rules established for DOCX submissions which is absolutely ridiculous that we are forced to pay a fee because the USPTO has failed to make it possible to avoid the fee for that particular situation. We never file a DOCX submission without the auxiliary PDF copy, and we don’t even bother submitting DOCX for any specification that has equations, symbols etc. within the spec. We just have succumbed to paying the surcharge for those applications. [We] feel the PDF specification should be the originally filed specification of record and a DOCX version should be the auxiliary. We still file PDF specifications for all other types of applications even if DOCX isn’t required because we don’t want to risk having issues with the specifications.
  • They should have started with responses to Office actions before trying to move patent applications or should have the DOCX as the backup document.
  • This requirement is short sighted. Over the course of my career I have witnessed how old word processor files do not correctly open or translate into newer software updates or programs on my current computer. Filing by PDF is the only way to ensure that what you file will withstand the test of time and be sure to retain the historical integrity of the filing for the life of the patent.
  • This was a top-down initiative that did not adequately take into account practitioners legitimate concerns.
  • USPTO [does not tell the truth].
  • We are client driven; client preferences vary.
  • We are filing DOCX with an auxiliary PDF. We are not crazy about it, but feel it reduces the risk to an acceptable level.
  • We are raising this issue with our E+O carrier. We think all patent attorneys should.
  • We don’t fully understand the risks and particularly if an auxiliary pdf is filed.
  • We feel this is poorly planned. This fully fails to appreciate that translations … (with character-to-letter conversion keyboards) create non-removable DOCX meta data causing submission rejection.
  • We file 371s in PDF form. If we were to file a continuation from that 371, the USPTO wants us to file in DOCX, which makes no sense. We have also been hit for the surcharge by not filing a preliminary amendment in DOCX, even if we submitted the spec and original claims in DOCX. All of this is silly.
  • We file mostly US provisionals followed by PCT, then 371, DOCX is not (yet) required in this scenario.