Status of DOCX initiative as of right now

(Update:  the USPTO has blinked a third time about its $400 non-DOCX penalty.)

In this blog article, I will describe the status of the USPTO’s DOCX initiative as of today.  What I describe here is how it is going to get worse for patent applicants and patent practitioners over the next few months, absent the USPTO choosing to “blink” again and perhaps postpone some of the bad things that are imminent. 

Here is how things look as of today:

• • From now until April 3, you can file a patent application in PDF, and you can have the PDF “control”, and it won’t cost extra to file PDF.
  • From April 3 to June 30, if you don’t want to pay the $400, you would have to hand in your patent application in a DOCX format, and the only thing saving you from profound professional liability risks is that you can hand in a protective PDF version of your patent application.  If the USPTO renders the DOCX file inaccurately (maybe a square root sign that becomes a smiley face, or a Greek letter μ that becomes an m) then you would be able to point to the PDF file which would “control” and you could get the USPTO to correct its mistake.  The PDF file will be maintained in perpetuity in the application file, so it will be available to save you even if the USPTO mistake is not discovered until litigation time.  (To be able to file the protective PDF file, you cannot use EFS-Web;  you must use Patentcenter.)
  • After June 30, if you don’t want to pay the $400, you have to hand in DOCX and it “controls” and you are forbidden to hand in anything other than the DOCX to try to show what you really wanted the contents of the patent application to be.  If the USPTO renders the DOCX file inaccurately, you are out of luck.  Maybe the USPTO error will not get noticed until litigation time, at which time you can assume you would get sued.  The price for malpractice avoidance is to pay the $400 and file in PDF.

Five members of the listservs met with USPTO people about DOCX on February 1.   (You can read about the February 1 meeting here and you can read about a followup letter that we sent to the USPTO on February 14 here.) USPTO agreed to a followup meeting and it will take place on March 23 at 3PM Eastern Time.  We keep hoping that USPTO will see sense in all of this.  A chief “ask” is that the USPTO permit a second available penalty-free filing path in addition to the DOCX filing path.

On this second penalty-free filing path, the applicant or practitioner would file the patent application in PDF.  The filer would ensure that the PDF is not merely image-based but is the kind of PDF that contains the character-based text of the patent application in a way that software can extract from the PDF.  In this way, the USPTO would get the characters that it wants, and the filer would be able to file the patent application in PDF format, which is a format that works reliably (which DOCX does not).  The PDF file would “control”.  On this filing path, as we proposed it to the USPTO, the filer would not have to pay the $400 penalty.  Everybody would get what they want — the filer gets the trusted PDF format as the “controlling” document, and the USPTO would get all of the characters that it wants.

Or, the filer that for some reason really did not mind the professional liability risks of having a DOCX file “control”, and really did want to file in DOCX format, would still have that DOCX filing path available, on our proposal to the USPTO.  The filer would be able to choose among either of the two filing paths (DOCX or text-rich PDF) and neither path would incur the $400 penalty.

Unfortunately as of right now, we five listserv members who met with the USPTO people on February 1 lack any confidence that we have gotten the USPTO to see sense about all of this.  So as of right now, there are two imminent bad dates — the April 3 bad date mentioned above, and the June 30 bad date mentioned above.

We keep hoping the USPTO will “blink” again, perhaps postponing the bad dates for another six months or more.  Or, beyond all imagining, we keep hoping the USPTO will get some common sense and realize that our proposed “text-rich PDF with no penalty” filing path could be a win-win for applicants and practitioners, and for the USPTO.

What can you do to help?  One thing you can do is to join PTAAAMIGAN.  You can read about it here: https://ptaaarmigan.org/.

You can see on the PTAAARMIGAN web site that it has a goal of pursuing the interests of applicants and patent practitioners in several areas.  One of the action items listed on the PTAAARMIGAN web site is “Repeal of the PTO’s DOCX rule.”

There are several things that PTAARMIGAN hopes to try to do about this DOCX initiative between now and April 3.  For a number of reasons, PTAAARMIGAN is more likely to make progress if it has plenty of members.

So please join.  It does not cost money to join.  Your membership would help.