Category: non-DOCX penalty

Some firms and corporations are trying to figure out what to do about the USPTO’s DOCX initiative (the $400 non-DOCX penalty) that came into effect on January 17, 2024.  Other firms and corporations have already decided what to do about the DOCX initiative.  In recent days I surveyed firms and corporations about their present approaches to the DOCX initiative.  How many law firms have written to their clients, telling them that the firm refuses to take the risks of filing in DOCX?  How many firms and corporations have decided not to file in DOCX format (meaning that they have decided to pay the non-DOCX penalty)?  How many firms and corporations have decided to file in the DOCX-plus-auxiliary-PDF path?  How many firms and corporations have decided to file in the DOCX-alone path?  Over 150 law firms and corporations responded to the survey.  Read on to see the survey findings.

Continue reading “How law firms and corporations are dealing with USPTO’s non-DOCX penalty”

(Update:  the survey responses have been received.  You can see the survey findings.)

Some firms and corporations are trying to figure out what to do about the USPTO’s DOCX initiative (the $400 non-DOCX penalty) that came into effect on January 17, 2024.  Other firms and corporations have already decided what to do about the DOCX initiative.  This survey hopes to collect responses from firms and corporations about their present approaches to the DOCX initiative.  How many firms and corporations have decided not to file in DOCX format (meaning that they have decided to pay the non-DOCX penalty)?  How many firms and corporations have decided to file in the DOCX-plus-auxiliary-PDF path?  How many firms and corporations have decided to file in the DOCX-alone path?

Please respond to this survey.

Attend this webinar to dispel five myths about the USPTO’s DOCX initiative.

On January 17, 2024 the USPTO commenced charging its $400 penalty in applications where the filer uses the tried-and-true legacy-PDF path for filing US utility patent applications.  The desire to avoid having to pay this penalty has prompted applicants and practitioners to explore the other two available filing paths, namely DOCX-plus-aux-PDF and DOCX-without-aux-PDF, each of which presents substantial risks when compared with the legacy PDF path.

In an attempt to convince applicants and practitioners to take the risky paths, the USPTO has by now presented a staggering over one hundred fifty webinars (blog article).  In the webinars, the USPTO has been and continues to be, to put it gently, disingenuous about the risks of the DOCX filing paths.  Continue reading “Webinar: Five myths about filing US patent applications in DOCX”

The urgent question outstanding for those who file utility patent applications at the USPTO is, are they stuck with no choice but to pay the $400 penalty to preserve the safe and trusted legacy PDF filing path, or is there any chance that the “DOCX with auxiliary PDF” path might present an acceptable level of professional liability risk so that the client could avoid the $400 penalty?  Maybe the USPTO will clarify this.  Continue reading “Maybe USPTO will clarify the “DOCX safeguard””

There is a way to get nearly all of the supposed benefits from the validations provided in USPTO’s DOCX filing paths, while avoiding the ponderous professional liability risks of those DOCX filing paths.  Continue reading “Getting the benefits of DOCX filing while avoiding the risks”

(Update:  it looks like maybe the USPTO might answer my letter about this.  See blog article.)

The USPTO has not yet answered a letter from ten days ago, asking about the metes and bounds of the (apparently quite limited) safeguard provided by a protective PDF accompanying a DOCX patent application.  Continue reading “A second unanswered letter from the USPTO – DOCX safeguard”

(Update:  it looks like maybe the USPTO might answer my letter about this.  See blog article.)

Anybody who files a US utility patent application is forced to choose among three filing paths, each of which has advantages and disadvantages.  The paths include:

• • Legacy PDF.  This is the path that incurs the $400 non-DOCX penalty.  If you pick the legacy PDF filing path for your patent application, you can draw upon twenty years of experience with Certificate of Correction practice.  If a correction of the issued US patent is needed because of a USPTO error, the path for correction is well understood and predictable.
  • DOCX without applicant-generated PDF.  A first filing path that permits the applicant to avoid the need to pay the non-DOCX surcharge is the filing of the patent application in DOCX format, without also filing an applicant-generated PDF.   If you pick DOCX without applicant-generated PDF, it appears that there is no correction path available to the patent owner at all, except in the relatively rare case where the patent issues within one year of the application filing date.
  • DOCX with applicant-generated PDF.  A second filing path that permits the applicant to avoid the need to pay the non-DOCX surcharge is the filing of the patent application in DOCX format, accompanied by an applicant-generated PDF.  If you pick DOCX with applicant-generated PDF, it is not very clear what correction path is available to the patent owner.  One of the Federal Register notices talks about an “ongoing safeguard”, but it is not clear when a correction request may be filed (maybe only within one year of the application filing date).   

Continue reading “What exactly is the “ongoing safeguard” that the applicant gets from the “auxiliary PDF”?”

Two days ago I published (blog article) the text of a letter that our firm sent to some of our instructing foreign patent firms.  One of the firms wrote back to us about this, asking whether the “auxiliary PDF” option in the DOCX filing path might alleviate the DOCX risks sufficiently to permit following the DOCX filing path, and thus to permit avoidance of the $400 non-DOCX penalty.  Here is how we responded to the instructing foreign patent firm:  Continue reading “What we wrote to one of our instructing foreign patent firms today about DOCX”

Yesterday (blog article) I posted the text of a letter about the $400 non-DOCX penalty that our firm has sent to a number of the non-US patent firms that send work to us.  Today a partner at another patent firm has provided a copy of a letter that that patent firm is sending to a number of its clients.  Here is that letter:  Continue reading “What another patent firm is telling its clients about the $400 non-DOCX penalty”

(See this followup blog post about what we wrote to one of our instructing foreign patent firms after they responded to the letter quoted below.)

Some non-US patent firms entrust to our firm the filing of US patent applications.  We realized that they would need to hear about the $400 non-DOCX penalty that the USPTO started charging on January 17, 2024.  Here is what we wrote about the $400 non-DOCX penalty to some of these non-US patent firms:  Continue reading “What we are telling non-US patent firms about the DOCX penalty”