What we are telling non-US patent firms about the DOCX penalty

(See this followup blog post about what we wrote to one of our instructing foreign patent firms after they responded to the letter quoted below.)

Some non-US patent firms entrust to our firm the filing of US patent applications.  We realized that they would need to hear about the $400 non-DOCX penalty that the USPTO started charging on January 17, 2024.  Here is what we wrote about the $400 non-DOCX penalty to some of these non-US patent firms: 

Hello Colleagues.

This email describes a new government fee that the USPTO has begun charging from January 17, 2024 for non-provisional utility patent applications. To do filings in the same trusted way as in the past twenty years (with PDF files), it is necessary to pay the government fee. To avoid the government fee, the applicant is required to file the patent application in a DOCX format. This approach offers many risks that extend for many years into the future. It also imposes extra needs for special detail-oriented proofreading when the 18-month publication happens, and again when the patent issues. Such proofreading would incur further professional fees.

If your office were to ask us to file a US non-provisional utility patent application now, we will strongly urge that the fee be paid, so that the client can get the benefit of being able to file with trusted PDF files. (The fee is $80 for micro entities, $160 for small entities, and $400 for a non-discounted applicant.) Such a path avoids the need for the special detail-oriented proofreading (that relates to the DOCX filing path) at 18 months and at issuance. Our feeling is that the various risks and proofreading needs that get avoided by payment of the fee are far more significant than amount of the $80 or $160 or $400 fee.

If your office or your client were to insist on filing in the DOCX format, then we would need to discuss the situation and the risks. Unless some agreement could be reached about who would take responsibility for the risks, and who would pay for the extra work required, our office would likely decline to accept the task.

If we were to be given any filing task from your office for a non-provisional utility patent application, on a rush basis, with no previous discussion of the DOCX risks and agreement about such risks, we would automatically proceed with the case in PDF format, and we will pay the related fee. We would of course expect to be reimbursed for the fee.

If you would like to know more about the DOCX format initiative at the USPTO, and the risks connected with it, and the special detail-oriented proofreading needs, please let us know.

Carl Oppedahl

Oppedahl Patent Law Firm LLC

3 Replies to “What we are telling non-US patent firms about the DOCX penalty”

  1. As a practitioner and applicant (university) I think the $160 small entity pdf fee seems like a no brainer but I suspect many smaller clients will balk at the extra fees.

    The extra proofreading reminds me of the old xml filing days.

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