Using DOCX leads to delay in visibility in IFW

USPTO has made it plain that it really wants filers to file their US patent applications in Microsoft Word format, not as PDFs.  (USPTO expresses this wish by saying it wants patent applications to be filed in “DOCX” format, but of course there is no single “DOCX” format, there are many variants of DOCX and the only variant that USPTO handles correctly is the variant that Microsoft Word generates.)  There are many drawbacks to the way that the USPTO has implemented its handling of patent applications filed in a DOCX format, and one of them is that this can result in a long delay in the visibility of the newly filed patent application in IFW.  It is yet another reason to simply file in PDF format. 

By way of background, one of the big problems these days with e-filing of new patent applications at the USPTO is that it often takes hours, and sometimes takes days, for the newly filed patent application to show up in IFW.  This can happen if the filer files the patent application in PDF format.  The main point of this blog article is that the delay in visibility in IFW can be far worse if the filer chooses DOCX as the format for the filing.

In one of my recent e-filings, there was a delay of almost two weeks with the visibility in IFW of all parts of a newly filed patent application.  And when I asked an EBC (Electronic Business Center) person why it took so long, he said it was because I had selected DOCX as my filing format.  Here is what the EBC person wrote to me on June 18, 2020:

From what I was able to see four of your documents contained error messages that indicated a delay in processing. […] The error messages for the documents […] are listed below:

claims.docx- The margins of the attached document do not meet USPTO rules. This may cause processing errors or delays.

abstract.docx- The margins of the attached document do not meet USPTO rules. This may cause processing errors or delays.

specification.docx- The specification paragraph numbering is not in the proper format. Please review and revise if necessary.The margins of the attached document do not meet USPTO rules. This may cause processing errors or delays.

Keep in mind that USPTO’s stated reason for asking for Microsoft Word format is so that USPTO can scrape the characters from the DOCX file for use in USPTO’s internal processes, including the 18-month publication and the typesetting of the issued patent.  With such a character-scrape, it is absolutely irrelevant what margins the filer might or might not have set in the DOCX file.  And with such a character-scrape, it is absolutely irrelevant whether the paragraph numbering in the specification is or is not in “the proper format”.  Indeed nothing in the Code or Rules even requires paragraph numbering in the specification at all.  In my case I did not use Microsoft Word to create my DOCX file (I used Libre Office).  If I had used Microsoft Word, then my paragraph numbering would have been in what USPTO defines to be “the proper format”.  But the way that Libre Office generates paragraph numbers, they are not in “the proper format”.  

So yes if you wonder in a particular case why it took so long for all of the documents in the case to find their way into IFW, consider that your ill-advised decision to file in DOCX format may be the cause.

13 thoughts on “Using DOCX leads to delay in visibility in IFW

  1. And yet again, another reason for me to keep filing everything as PDF’s …. If I play my cards right, I should be able to retire before they insist on their kind of DOCX files (I was heartened to see that the fee for sticking with PDF filing didn’t make it into the final rule ….)

  2. And yet again, another reason for me to keep filing everything as PDF’s
    And what IS up with the delay in documents appearing in the IFW? Given everyone’s problems with some documents getting ‘lost’, we’ve become paranoid in my shop & keep clicking away post filing to check (sigh)

    …. If I play my cards right, I should be able to retire before they insist on their kind of DOCX files (I was heartened to see that the fee for sticking with PDF filing didn’t make it into the final rule ….)

  3. Even if the margins, etc., are irrelevant for extracting the text from the OOXML files, they presumably are relevant when the files are converted to PDF. Are the PTO’s internal systems ready to use the extracted text exclusively, or do personnel, e.g., Examiners, still need to refer to the PDF version in the IFW to do their real work?

    • Here is a thumbnail of one of the pages that got flagged as having defective margins. I invite your reaction. If you were the Examiner in this case, do you think these margins would somehow get in the way of your doing your real work?

      • I didn’t mean to suggest that there was anything actually wrong with your margins, which look fine for examination (even if I can’t be sure from the thumbnail if they would comply with Rule 52 when printed).

        What I was trying to convey–and perhaps I did so inartfully–is that in a workflow that receives an OOXML file from a user and then performs an automated conversion into a PDF, it is reasonable to build in a check for sensible margins. It is possible to set up word processing documents in odd ways, including those that cause some of the text to be rendered outside the boundaries of the declared output medium (or at least cause some of the text not to be rendered within the boundaries).

        I am defending only the notion of checking that, when the document is rendered as PDF, the text appears to reside within the visible part of the page (even if, as you note, Rule 52 does not properly apply). I am not defending in any way the PTO’s defective interpretation of the margins, defective conversion of OOXML to PDF (or any other artifacts of bad conversion), or delays occasioned thereby.

  4. Your post doesn’t say: Were the margins in your DOCX documents correct according to 37 CFR § 1.52(a)(1)(ii)? I.e., was this another issue that your use of Libre Office fooled the PTO’s poor conversion software into seeing?

    • Rule 52 says:

      All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application … must be on sheets of paper that are the same size, not permanently bound together, and … with each sheet including a top margin of at least … 3/4 inch, a left side margin of at least … 1 inch) a right side margin of at least … 3/4 inch, and a bottom margin of at least … 3/4 inch …

      Note that my papers were not submitted on “paper or by facsimile transmission”. So this rule is irrelevant to e-filing. But in my DOCX file, all four margins were set at the Libre Office default which is 0.79 inches. Note that this fully satisfies the requirements for the top, right, and bottom margins. Yes it is true that the left margin in my DOCX file was not quite one inch.

      Drilling down further, the Rule says:

      Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.

      So now we go on a treasure hunt to see what margins, if any, are defined in “the Office’s electronic filing system requirements.”

      I will be grateful if someone can point me to where, if anywhere, the USPTO has publicly documented any margin requirement for e-filed documents.

      • It wasn’t hard to find. Look at the 2014 Nonprovisional (Utility) Patent Application Filing Guide at https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent#:~:text=Each%20document%20can%20be%20created%20in%20a%20PDF,margin%20of%20at%20least%202%20cm%20%283%2F4%20inch%29.

        Whether that qualifies as “the Office’s electronic filing system requirements” since it’s not part of a regulation isn’t clear to me, but it’s a clear statement of a requirement on its face.

        • “Wasn’t hard to find.” I wonder what the click path is, starting from the main USPTO web site home page, that reaches this Guide. I wonder how a would-be DOCX filer could ever find this 2014 Guide if clicking on links that contain (any of) the words contained in that part of the Rule:

          Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.

          Seems to me the would-be DOCX filer, looking around for links to click on that contain words like “electronic filing system requirements”, would in fact never stumble upon this 2014 Guide.

          When you go to the search box on the USPTO web site, and plug in search terms like “electronic filing system requirements”, the 2014 Guide never shows up on the first dozen hits.

          I challenge the view that this 2014 Guide is “easy to find” in the context of the Rule language:

          Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.

          Note that DOCX filing only became possible (in beta test) in about 2017. It strains credulity that the USPTO was so prescient in 2014 as to publish requirements in 2014 for something that only became possible to do for the first time only three years later.

          • While I originally found it with a Google search, if you search the PTO web site for “electronic filing system requirements” (your suggested search phrase) this document is the 5th item in the search results. And a title that includes “Filing Guide” certainly suggests it would be useful to check. And no, it wasn’t stated in terms of DOCX filing, but it certainly shows the PTO published something that included a heading of “Application Requirements” that described how PDFs should have margins that are the same as the paper or fax margin requirements. Since DOCX documents are converted to PDFs, no one should be surprised that the DOCX format checking would apply these requirements.

            I will leave to others to decide whether Rule 1.52’s mention of “the Offices electronic filing system requirements” would be satisfied by the “Nonprovisional (Utility) Patent Application Filing Guide.” FR Vol. 72 No. 14 states that the “Legal Framework” document sets forth the “electronic filing system requirements,” saying the phrase “codifies and continues the current EFS practice.” Id. at 2772. The Legal Framework document doesn’t refer to the Guidelines document, however, and the Legal Framework document contains no mention of margins.

      • | Each document can be created in a PDF format for filing via
        | EFS-Web must have a top margin of at least 2 cm (3/4 inch),
        | a left-side margin of at least 2.5 cm (1 inch), a right-side
        | margin of at least 2 cm (3/4 inch) and a bottom margin of at
        | least 2 cm (3/4 inch).

        http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent

        Although it appears the PTO authors intend “must have a top margin…” to mean “shall have a top margin…”, no authority for that mandate is cited.

        • It’s not a Rule. It’s not binding. It’s not even titled “USPTO electronic filing system requirement”. I would love to see a USPTO solicitor argue before a judge that this lone statement constitutes a published requirement for margin sizes that’s binding on electronic filers.

  5. Carl, please forward me the original EBC email. If I file an action seeking to enjoin the PTO from promulgating a rule requiring docx filings, this email may be one piece of evidence supporting the injunction. Best, RICK

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