Ways to avoid having to pay USPTO’s $400 non-DOCX penalty

I have given quite a bit of thought to ways that a patent applicant or practitioner might be able to avoid the profound malpractice risk of filing in Microsoft Word (DOCX) format when filing a patent application.  As of right now I have thought of two ways.  Maybe there are more ways. 

The problem is that starting on April 3, the USPTO plans to punish any filer that tries to establish a PDF file as the controlling version of a patent application that is being filed.  The punishment will be the imposition of a $400 “non-DOCX penalty”.

What the USPTO proposes is that filers would instead take the malpractice risk of filing a “DOCX” file.  The problems with this filing approach are several:

• • There is no “DOCX standard”.  Microsoft’s word processors (Microsoft Word and Microsoft Office) create word processor files that end with the letters “docx” and that are based upon proprietary standards within Microsoft.  Other word processors try as best they can to export files ending in “docx” that might or might not look the same if opened in Microsoft Word.
  • Everybody except, it seems, the USPTO, knows perfectly well that there is no “DOCX standard”, and that as a general matter if somebody uses a non-Microsoft word processor to open a file created in Microsoft Word, it won’t look the same.  Line breaks will be in different places, page breaks will be in different places, and end-of-line hyphenations will be non-identical.  That’s for starters.  Math equations, chemical formulas, tables, and other things that are more complicated than mere text sentences, always look different.  The same is true if a user of Microsoft Word opens a file that somebody exported as “docx” from a non-Microsoft word processor.  Line breaks will be in different places, page breaks will be in different places, and end-of-line hyphenations will be non-identical.  And if the original document contained math equations, chemical formulas, tables, or other things that are more complicated than mere text sentences, they will likewise get broken or mangled or changed.  Everybody except, I guess, the USPTO, knows this.
  • For those who drink the USPTO koolaid and get suckered into filing a patent application as a DOCX file, the thing to remember is that if three different people were to open that DOCX file with three different word processors, they would see three different renderings on their computer screens.  Worse, the USPTO’s position is that it does not matter so much what the DOCX file contained, what matters (what “controls” in USPTO terminology) is what the USPTO gets when it runs the then-current version of its proprietary PDF rendering engine to make a PDF file from that DOCX file.   That proprietary PDF rendering engine is by now up to version 18 according to Director Vidal.  The USPTO will of course change this proprietary PDF rendering engine to version 19 or version 20 without warning at various times in the future.  This will change what “controls” in such a patent application.

But, says, the USPTO, if you want to actually pick the computer file that “controls” and if you want it to be a file that you can actually trust (a file in a format that is not subject to the vagaries of USPTO’s migrating to version 19 or 20 or 50 of its proprietary PDF rendering engine), then yes you can file a PDF file and have it “control”.  But the price for this is a $400 penalty.

In the face of this, what can you do?

One malpractice-avoidance path would be to file a given patent application as a US provisional application, maybe the day before filing the planned non-provisional application.  When filing the non-provisional application, in the body of the non-provisional application, you recite that you are incorporating by reference the provisional.  The provisional can be a PDF and so you can be sure that if the square root sign in the provisional is indeed a sqaure root sign, then that controls.  Later in the non-provisional case, even if it turns out that the USPTO updated its proprietary PDF rendering engine in a way that changed the square root sign into a smiley face, you will be able to bring in the square root sign and it will not count as “adding new matter”.

I have also identified a second malpractice-avoidance path.  File the non-provisional application as a PCT application.  Later, enter the US national phase.  What’s nice about this path is that the USPTO is incapable of requiring a national-phase entrant of having to hand in a DOCX file (and forcing it that the DOCX file “controls”).  The PCT treaty obligations require any patent office (including the USPTO) to suck it up and accept the PDF version that it receives from the IB during the national phase entry process.

This path is what lots of filers follow nowadays anyway, and have been following since long before the USPTO started pushing its disastrous “non-DOCX penalty” program.  The idea is that maybe you filed one or more US provisionals, but when the time comes to file a non-provisional, the filer exerts the self-control not to file it as an ordinary US patent application.  Instead, the filer files a “PCT First”.  What gets filed is a PCT application, and it is not preceded by any US non-provisional application.  What’s more, the filer exerts the self-control to refrain from filing any domestic US application “in parallel” with the PCT application.

The idea of PCT First is that after all, at the time of filing the non-provisional application, the filer does not yet know whether the invention is patentable.  So why flush two patent office filing fees down the toilet at this time when we don’t yet know whether it is patentable?  Just spend the PCT fees.  Soon enough you will have an ISR/WO in hand and you will know more about whether it is patentable or not.  If the USR/WO says it is patentable, then for the first time at that point, spend the USPTO domestic filing fees on a national-phase entry.  And put the case on the Patent Prosecution Highway.  And then maybe get a quick issued US patent.

When I propose this PCT First path, I am assuming for sake of discussion that the applicant is unable to rule out the possibility that the applicant might eventually wish to pursue patent protection somewhere outside of the US.  If this is the applicant’s situation, then it would be natural to file a PCT application at some point in the patent-filing process.  In other words, the business decision had already been made (for reasons unrelated to this DOCX challenge at the USPTO) to spend the money on filing fees to file a PCT application.  The point, then, is to set it up so that the first non-provisional application that gets filed is that very PCT application (hence the term “PCT First”).  And, relating to this, in the filing scenario that I propose, the applicant has the self-control to refrain from filing a 111a US nonprovisional patent application (because such application faces the malpractice risks of filing in DOCX format).  Later, if and when the applicant decides to proceed in an effort to obtain US patent protection, the applicant enters the US national phase.

And, today’s point being, you will have completely avoided having to pay the $400 non-DOCX penalty, and yet will have avoided the malpractice risks of filing in DOCX.