USPTO blinked on the non-DOCX surcharge

(Correction — I am told that both AIPLA and IPO also contacted the USPTO privately in recent weeks about this problem.)

It looks like maybe the USPTO blinked on the non-DOCX surcharge problem, at least a little.  What forced the USPTO to blink was a letter from 117 patent practitioners pushing back on a December 20, 2022 Federal Register notice.  The notice maintained and doubled down on January 1, 2023 as a date that all US patent filers would face a harsh choice — incur substantial risks of losses of patent rights due to the DOCX program, or pay $400 to be able to file a patent application in a way that eliminated those substantial risks.  The only visible pushbacks on this December 20, 2022 FR notice were:

• • • the above-mentioned letter signed by 117 practitioners, and
    • ceaseless personal efforts by Bradley Forrest, a partner at the Schwegman firm.

In this blog article I briefly describe the state of play on the DOCX program as it now appears.

By way of background, for the past couple of years, some stubborn people at the USPTO have been trying to force patent applicants to do their authoring of patent applications using Microsoft Word and requiring applicants to e-file their patent applications in Microsoft Word’s flavor of DOCX format.  This would save the UPTO $3.15 per patent application in OCR expenses, says the USPTO.  The penalty for failing to do what the USPTO wants would be an extra fee of $400 per patent application.

There are many reasons why this stubbornness is bad for science and the useful arts.  I have elaborated on this in previous blog articles including the following fourteen articles:

• • • One hundred six practitioners write to the Acting Commissioner for Patents, June 7, 2022
    • What is in the “yearlong study” that supposedly says DOCX is the right path?, June 7, 2022
    • The “yearlong study”,  June 7, 2022
    • Working out the evils in the variants of the USPTO’s DOCX adhesion contract, March 5, 2022
    • Beware USPTO’s DOCX system, November 3, 2021
    • Still concerned about DOCX?, May 27, 2020
    • How the USPTO should do DOCX (pre-conversion format), April 19, 2020
    • An open letter to the Commissioner for Patents, April 13, 2020
    • How the non-DOCX penalty will work for non-English filings?, October 10, 2019
    • Seventy-Three Patent Practitioners, October 1, 2019
    • If there was any doubt that USPTO does not really support non-Microsoft DOCX files, August 28, 2019
    • Comments on the USPTO’s proposed penalty for non-DOCX filings, August 25, 2019
    • USPTO fails to support DOCX from non-Microsoft word processors, August 9, 2019
    • The problem with USPTO’s proposed non-DOCX penalty, August 5, 2019

On December 20, 2022, the USPTO published its most recent Federal Register notice which you can see here.  The notice says that in six months, the USPTO would cut off the continued availability of any of the safeguards that might protect practitioners from the risks of the DOCX procedure.

I will try to use polite language in reacting to the FR notice of five days ago.  The notice is breathtaking in its disingenuousness.  The notice ignores and/or mischaracterizes nearly every suggestion or comment made by practitioners during the years of pushback by practitioners.  The notice lies about a supposed absence of any problems with DOCX having been reported by practitioners.  (Any softer word than “lies” would be inaccurate.)

As I mentioned above, there have been only two meaningful and visible sources of pushback on this ill-conceived DOCX program.  One source of pushback has been tireless and ongoing quiet diplomacy with the USPTO by Bradley Forrest (web page), a partner at the Schwegman firm.  The second source of pushback has been collective action by groups of patent practitioners from listservs, signing letters like this one to the USPTO.

On December 23, 2022 (two days ago), a group of 117 practitioners signed a letter to Director Vidal, pushing back on the December 20 FR notice.  You can see the letter here and you can see the cover email here.   (See also attachments Test B and Test C.)  The letter and the cover email each use strong language.  There was probably no choice but to use strong language, because the dozens of previous efforts to get the USPTO see reason on this, using polite language, had not succeeded.   Most of the hard work to prepare the letter and to round up signatures was done by David Boundy.  The signers were drawn from the memberships of the Patentcenter, PAIR, and EFS-Web listservs, which are online communities of patent practitioners.

Yesterday, December 24, Director Vidal responded by telephone to David.  As David describes it, during her telephone call she promised that within the next week there will be an additional Federal Register notice, providing what she calls “breathing room” for further discussion.

There are several takeaways from the events of the past few days.

Too soon to know what exactly the “breathing room” will be.  As of right now, all that the practitioner community has in hand is what David heard on the telephone from Director Vidal.  We are told that within the next week, there will be a USPTO notice providing “breathing room” for future discussion.  Until we see the notice itself, we won’t know exactly what it says.  Let’s hope that Director Vidal does what she said she will do.

The practitioner community owes a “thank you” to David Boundy.  It is David (web page) who dropped everything on December 20 and drafted up a letter to the USPTO about the offending notice that got published on December 20.  It is David who coordinated comments from members of the three listserv communities and got the letter into final form.  It is David who rounded up the 117 signatures from the three listserv communities, and then transmitted the letter to the USPTO.  Thank you, David.

The practitioner community owes a “thank you” to Bradley Forrest.  Bradley (web page) has been quietly and persistently interacting with decisionmakers at the USPTO for many years now, begging and pleading for the USPTO to listen to the concerns of the patent filing community.  Were it not for Bradley’s efforts, very likely the USPTO would have rammed its ill-conceived DOCX program down the throats of filers a year earlier.  Thank you, Bradley.

Intellectual property practitioners should be glad that the listserv communities exist and that so many generous practitioners give their support to the communities.  If you are reading this blog article and if you have not yet joined one or more of the listserv communities, you know what to do.  Join the generous and experienced practitioners who give time and energy to important issues like pushing back on this ill-conceived DOCX project.  You can join listservs for trademark practice, Madrid Protocol practice, design protection practice, patent practice, PCT practice, copyright practice, ST26 sequence listing practice, and IP transaction practice.

The practitioner community owes a “thank you” to the 117 practitioners who signed this letter.  If you have not already done so, scroll down to the last five pages of the letter.  (Yes, the signatures fill five pages in two-column format, that is how many people signed this letter.)  Look to see who the 117 practitioners are that gave their names to this letter, to try to influence the USPTO away from its wrong-headed path.  Surely you know some of these signers.  Maybe you can give a “thank you” to them.