What another patent firm is telling its clients about the $400 non-DOCX penalty

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: 

Dear <name>:

Starting January 17, 2024, the U.S. Patent and Trademark Office (PTO) will charge a new fee for non-provisional utility applications filed under 35 U.S.C. § 111(a) if the specification, claims, and abstract are submitted in a format other than DOCX. The fee is $400 for a non-discounted entity, $160 for a small entity, and $80 for a micro entity.

However, due to the documented and recognized potential for errors in the PTO’s processing of DOCX patent applications, we recommend sticking with our current practice of filing in PDF format, and paying the new fee. This recommendation is consistent with the practice at many of our peer law firms.

Accordingly, unless you request otherwise, we will continue to file applications in PDF format, and the new fee charged by the USPTO for non-DOCX filing will be added to the application fee paid by the client. As a <large/small/micro> entity, the additional fee to <client name> will be <$400/$160/$80> per application.

We will only file your applications in DOCX format if you expressly request in writing that your applications be filed in DOCX format, thereby acknowledging the risk of errors in the PTO’s processing of DOCX applications, and the possible adverse effect on patent rights. In such a case, we will file the application in DOCX format as requested, along with an auxiliary PDF version of the application (see https://www.uspto.gov/patents/docx ). The PTO’s DOCX intake engine accepts only a restricted subset of DOCX features; if a word-processing file uses features that the PTO’s DOCX engine does not accept, we will convert the application to remove those features, with the consequent risk of introduced error. That conversion time will be billable to you, as an addition to any fixed fee charge. Because of the technological mechanism used by the PTO’s DOCX engine, it is impossible to thoroughly proofread the application as the PTO receives it, so we will not attempt that proofreading. We recommend that, at the time of publication of such an application, the published version of the application be checked against a known-correct version of the application, and, if any discrepancies are found, that a petition for correction be made. The PTO has announced a narrowing-door approach in which such petitions may be raised for only one year (the earliest that the PTO publishes an application in a form that permits error checking is eighteen months), then narrrows again at three years (23 years before most patents expire). The PTO has likewise announced that they will discard any protective PDF copies filed for error-correction after three years, which is before most patents issue. Even that retention period exists only “until further notice.” In short, the PTO has designed a system in which the average cost for DOCX filing is likely to exceed the fee assessed by the USPTO for non-DOCX filing, and the risk of the PTO’s error is forced entirely onto applicants. We thus recommend PDF filing.

Very truly yours,