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:

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.

12 Replies to “USPTO blinked on the non-DOCX surcharge”

  1. Fantastic Result.
    In addition to the “Thank You” to all the people involved at this issue here, I’ll say what I have said before in private.
    A big Thank You to Carl as well, for initiating and maintaining the various lists and posts and blogs. I find them a Really Useful Tool!

  2. Good morning, and Merry Christmas.
    Thank you for continuing work on keeping patent prosecution practitioners informed as to PTO issues.
    Please provide a link to the attachments “Test B – mangle claims” and to the “Test C – standard features” referenced in the “117” letter.
    Thank you.

  3. Dear Mr. Oppedahl,

    I have been reading your blog for some time, but I never wrote a comment before. I am pleased to comment for the first time by saying this: David Boundy, Bradley Forrest, you, and all the signers of this letter did the right thing.

    Here, in Europe, patent offices break the law too. So far, the European Patent Office has managed to get away with it, not least because it is (almost entirely) immune from suit. The French patent and trademark office, however, has not. For four years, it managed to require patent applicants to follow a DOCX filing scheme that was very similar to what the USPTO is planning. That scheme has just been struck down by the French supreme administrative law court, on the grounds that it contravened the PLT:

    Now, I know that the United States is a different place, and that the USPTO may well not be bound by the letter of the PLT. But your fight is a good one – not only for patent applicants, but for the rule of law in general. Keep it up.

  4. Thank you for supporting this remarkable and vital effort. How sad it is that we have to constantly be on guard against harm to IP rights from those entrusted with protecting them. Many thanks to David Boundy for spearheading this work and to Bradley Forrest.

    The Test B link provides just a single document of a short sample patent, but there is nothing about what happened in DOCX to mangle the claims. Can the additional files be provided?

  5. What good news! Thank you Carl Oppedahl, David Boundy, and Bradley Forrest for your tireless efforts trying to protect the integrity of our patent system! This is vital work of upmost importance.

  6. Thanks for your kind words, Carl. I just want to clarify (as you alluded to in the above correction) that much of my work was on behalf of AIPLA first as Chair of the Patent Relations Committee and then with the support of the board and executive director, Vince Garlock, in arranging many meetings over several years with PTO officials regarding DOCX. AIPLA has also been very active in providing comments to the proposed rules related to DOCX. Your help and ear have been instrumental in shaping our interactions with the PTO.

    1. Brad, after watching the AIPLA PTO relations committee be doormat for many years, it was a pleasure to see someone finally get that committee to use AIPLA’s weight for the good of practitioners and their clients when it came to this docx fiasco.

  7. It’s official. Here is the notice on PAIR this morning:

    ADVISORY (28DEC2022) The non-DOCX surcharge for filing a new utility nonprovisional application has been delayed until 04/03/2023, which applies to specification, claims and abstracts not filed in DOCX format. See FY2020 Final Patent Fee Rule for more information.

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