The USPTO had, up until now, blinked three times on the $400 non-DOCX penalty. Now it has blinked a fourth time on the $400 penalty. (Typographical error corrected from January 24 to January 17.)
Here is the rather disappointing history of USPTO’s handling of its $400 non-DOCX penalty:
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- On August 3, 2020, the USPTO announced January 1, 2022 as the start date of the $400 penalty. (You can see the Federal Register notice.)
- On November 22, 2021, the USPTO blinked a first time, changing the start date of the $400 penalty from January 1, 2022 to January 1, 2023. (You can see the Federal Register notice.)
- On December 29, 2022, the USPTO blinked a second time, changing the start date of the $400 penalty from January 1, 2023 to April 3, 2023. (You can see the Federal Register notice.)
- On March 9, 2023, the USPTO blinked a third time, changing the start date of the $400 penalty from April 3, 2023 to June 30, 2023. (You can see the Federal Register notice.)
Now the USPTO has blinked a fourth time. The USPTO is now changing the start date of the $400 penalty from June 30, 2023 to January 17, 2024. You can see the imminent Federal Register notice here. The preprint of the notice is archived here.
For each of the previous three blinks, the USPTO gave a face-saving excuse for the blnk, namely that the blink would “give applicants more time to adjust to filing patent applications in DOCX format.” Now, for the first time, the USPTO comes clean on the real reason for the blink, namely that the USPTO has figured out that the DOCX filing initiative as presently structured is fatally flawed. The imminent Federal Register notice says:
This further delay will give the USPTO an opportunity, through a separate Federal Register Notice, to invite and consider public comments on a proposed information collection pertaining to the impact of the § 1.16(u) fee on the filing of nonprovisional utility applications under 35 U.S.C. 111, including continuing applications. As required by the Paperwork Reduction Act of 1995 (PRA), the USPTO will submit the proposed information collection together with a summary of any received comments to the Office of Management and Budget for review under the PRA. Federal Register Notices published by the USPTO pertaining to the PRA are available at www.uspto.gov/learning-and-resources/federal-register-notices/federal-register-notices-2023. The USPTO expects that this delay will afford sufficient time to complete the PRA clearance process.
What reaction do you have to this fourth blink? Please post a comment below.
Incredible incompetence
Indeed! Any incompetent person has big shoes to fill if they want to surpass the USPTO.
Your vigilance and work is paying off in a big way. Thank you for this valuable service to the IP community and to inventors in general.
Thank you for all your work on bringing to light the issues with docx filing. No doubt that was an important part of this decision to seek public comment.
Thank you for your persistence! This has had me very concerned for some time now.
It seems to say January 17, 2024, or am I reading something wrongly. (?)
Thank you so much for commenting. Thanks to you I have corrected this in the blog article.
There was a separate notice on the same day (https://www.federalregister.gov/documents/2023/06/06/2023-11910/extension-of-the-option-for-submission-of-a-pdf-with-a-patent-application-filed-in-docx-format) that says they will keep the backup PDF when filing both docx and PDF as part of the permanent file. I was strongly opposed to the forced change to docx, but I’m OK with it if the PDF backup is kept indefinitely. I’d be interested in other people’s opinions.
Thank you for commenting, and for mentioning the separate notice that got published the same day. Yes, I blogged about that separate notice on the same day. You can see the blog article here.
You say you’re “OK with it if the PDF backup is kept indefinitely”. But there are lots of reasons not to be okay with it, as I detail in this blog article.