USPTO published a Notice of Proposed Rulemaking some months ago, proposing to hit the filer with a $400 if the filer files a patent application in a format other than Microsoft Word word processor format. (USPTO says “DOCX” but realistically the only way a filer can get USPTO’s system to work accurately is to generate the word processor file with Microsoft Word, and even then, only with Microsoft Word for Windows, in a very recent version of the software.)
I published two comments (here and here) explaining some of the reasons why I feel the USPTO got it wrong on this. And I joined seventy-two other patent practitioners in signing a comment that explored in quite some detail some of the things that USPTO got wrong on this.
I imagine most of us nowadays have started at least trying to e-file in DOCX, just to try to find out how bad it is so that we can get ready for how bad it will be when USPTO starts charging the $400 penalty. And recently I realized that there is a very interesting fact pattern that I am quite confident that no one at the USPTO thought about at all when it promulgated this Rule — the fact pattern where the initial filing is in a non-English language.
The thing is that EFS-Web only gives the filer one shot at uploading DOCX files. You can upload DOCX files in that very first EFS-Web submission, the submission in which you don’t yet know what your application number will be. But for any subsequent EFS-Web session, the option of uploading a DOCX file disappears from the user interface. At that point the only permitted upload format is PDF.
So what happens if, as happened to me last week, I am filing a new application in Dutch? If I do that, then at some later time I will be e-filing a translation of the application into English. If the $400 penalty were in effect, the e-filing of the translation would (it seems) necessarily and automatically trigger not only the $140 penalty for handing in the English translation on a day that is later than filing day, but would also trigger the $400 penalty for failing to upload the original patent application in DOCX format.
In this case, I uploaded the Dutch-language patent application into EFS-Web as three DOCX files, each of which was in the Dutch language.
I suppose once the $400 penalty goes into effect, this is what filers will have to do. If you are filing a non-English-language patent application, you will have to upload it to the EFS-Web as a series of DOCX files. It will be stupid and pointless, but you will have to do it if you wish to avoid having to pay the $400 penalty.
The alert reader will realize that if ever there was an opportunity for a loss of substantive patent rights, it is the use of USPTO’s DOCX system at all. Who can begin to guess all the ways that USPTO’s system might render a DOCX file inaccurately, and then you are forced to click the adhesion contract that says that you agree that USPTO’s PDF-rendered version of that DOCX file is the controlling document. Malpractice risk heaped upon malpractice risk.
But on top of this, who can begin to guess all of the ways that USPTO’s rendering engine might render a non-English-language DOCX file inaccurately? And how am I supposed to carry out a successful character-by-character review of a PDF rendering in Dutch if I am not fluent in Dutch?
So what I did in that case was to upload the spec, claims, abstract twice. Once each in DOCX format, and once each a second time in PDF format. So there!
The alert reader will point out that people who go to EFS-Web and who upload any given document twice when filing a patent application are people who will inevitably some day have to pay the penalty for having over 100 pages in their patent application. The first copy will be 90 pages and the second copy will be 90 pages and it will add up to 180 pages which will trigger the excess-pages penalty.
Actually the two copies probably will have non-identical page counts, because the rendering engine that USPTO uses for rendering a DOCX file into a PDF is a rendering engine that probably will get a different pagination than the filer’s own word processor gets.
What do you think about the proposed non-DOCX penalty as it relates to filing a patent application in a non-English language? Please post a comment below.