A new Best Practice – reporting docx

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.

The new Best Practice is this:

When you are reporting outgoing correspondence to a client, do not merely provide the PDF file.  Also provide the docx file.

The docx file will, in most cases, contain the entire text of the correspondence.  For example it may contain the entire contents of an Office Action.

Think how helpful this docx file might be, for example, for instructing counsel (IC) in a foreign country.  IC may for example have a regular practice of preparing a response to an Office Action.  The docx file can be very helpful as a starting point in the preparation of such a response.  The practitioner preparing the response can paste the docx file into the word processor in which the response is being prepared.  The practitioner can use the text from the docx file as a sort of checklist to ensure that all rejections and objections are being addressed.  The practitioner may also find it helpful to quote passages from the docx file in the response.

In the case of an application that is not visible in Global Dossier, the docx file could be machine-translated into the local tongue of IC.  (Of course if the application is visible in Global Dossier, what is much faster and easier is to make use of the machine translation capability of Global Dossier.)

Have you made use of the docx features of PAIR and EFS-Web?  If so, please post a comment below.

2 thoughts on “A new Best Practice – reporting docx

  1. After a year or so of testing, how was it like filing .docx documents with equations and greek symbols? Our experience (although, not with the USPTO) has been very, very challenging… We were losing close to 3-4 hours (of highly skilled labour) per file, just making sure the .docx was “safe”. We’ve even had a .docx from an inventor which had hidden XML from some program they use to control versions and distribution in their company.

  2. I believe that docx is available only in *private* PAIR. Is that correct? Has the USPTO indicated that it intends to make this available also on *public* PAIR?

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