Beware USPTO’s DOCX system

(Update:  it is time for you, dear reader, to consider signing another letter.  See blog posting.)

I have published several blog articles (see them here) warning practitioners about the problems with the USPTO’s ill-conceived plans for requiring patent applicants to submit their US patent applications in Microsoft Word format.

Every patent practitioner should attend a free-of-charge webinar that will be presented tomorrow by the Schwegman firm on this topic.

A look at how to file using DOCX documents in the USPTO Patent Center and how what you end up filing may not be what you intended to file. Or, just pay $400 more and submit a PDF of the application that the inventor approved.

To learn more or to register, click here.

4 Replies to “Beware USPTO’s DOCX system”

  1. Today, November 3, 2021, an attorney advisor in the USPTO’s Office of Patent Legal Administration (OPLA) called me and told me that during the luncheon on October 29, 2021, at the AIPLA Annual Meeting, Acting USPTO Director Drew Hirshfeld announced that the USPTO will be deferring implementation of the $400 non-DOCX filing surcharge. So far there has been no official announcement from the USPTO.

  2. So where are the holes in this practice:
    1. For client insisting on trying to save $400, set up a Customer Number for a belts and suspenders (BS) filing that will not be docketed and will be allowed to go abandoned unless the PTO hoses up the .docx filing and will not correct it.
    2. File a pdf version (just ADS, Application, and Drawings) without fees under BS Customer Number.
    3. Revise ADS Customer Number to real number, add pdf app # and filing date to the cross reference paragraph of the .docx filing and incorporate the pdf by reference.
    4. File .docx through Patent Center, download the app from PAIR after filing, report to client and ask them to review PTO pdf rendering.
    5. Docket a task to confirm client is satisfied with PTO rendering.
    6. Discontinue practice when PTO works out all bugs and documents are properly rendering.

  3. Is there a location which has a properly formatted DOCX application for visibility purposes? If so, please provide. Much appreciated.

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