| Electronic Filing and Submission |
Referenced Items (354, 355, 356, 357, 358, 359, 360, 361, 362, 363, 364, 365, 366) |
(354) Clarification of the Requirement for the Non-DOCX Surcharge
Summary
On January 17, 2024, the fee for filing a nonprovisional utility patent
application under 35 U.S.C. 111 that is not in DOCX format took effect. See
37 CFR 1.16(u). The United States Patent and Trademark Office (USPTO) has
become aware of some confusion about whether an applicant must pay the non-
DOCX fee if they submit, on the same day, an application in DOCX and a
preliminary amendment to the specification, claims, and/or abstract in PDF
format. This notice is being published to clarify that an applicant who
files a preliminary amendment to the specification, claims, and/or abstract
on the filing date of the application must submit the preliminary amendment
as a follow-on submission in DOCX format in order to avoid incurring the
fee set forth in 37 CFR 1.16(u) (hereafter referred to as "the non-DOCX
surcharge"). This notice also clarifies that an applicant who submits a PDF
version of the application (e.g., specification, claims, and abstract) when
filing an application in DOCX format must follow the process for submitting
an Auxiliary PDF set forth by the USPTO in order to avoid incurring the
non-DOCX surcharge.
Under certain conditions set forth in this notice, an applicant who
relied on confusing or incorrect information from the USPTO and filed a
preliminary amendment to the specification, claims, and/or abstract in PDF
format on the filing date of an application where the application was
otherwise filed in DOCX format, and who received a notice requiring the
non-DOCX surcharge but has not yet paid that surcharge, may file a petition
under 37 CFR 1.183 requesting waiver of the outstanding non-DOCX surcharge.
Background
The USPTO has been transitioning to the filing of patent application-
related documents in DOCX format through Patent Center as part of its
continuing efforts to modernize its patent application systems and
strengthen its ability to examine applications quickly and effectively. As
part of the transition, the USPTO implemented a fee for nonprovisional
utility patent applications filed under 35 U.S.C. 111 that are not filed in
DOCX format. See 37 CFR 1.16(u). This fee became effective on January 17,
2024.
Filing a preliminary amendment
37 CFR 1.16(u) applies to nonprovisional utility patent applications
filed under 35 U.S.C. 111 and provides that the additional fee (non-DOCX
surcharge) is required "where the specification, claims, and/or abstract
does not conform to the USPTO requirements for submission in DOCX format."
In accordance with 37 CFR 1.115(a)(1), a preliminary amendment that is
filed on the filing date of an application is part of the original
disclosure of the application. Thus, a preliminary amendment to the
specification, claims, and/or abstract filed on the same day as the
application must be in DOCX format to avoid the non-DOCX surcharge.
Patent Center provides for the initial submission of new applications
and follow-on submissions in existing applications. See
https://www.uspto.gov/patents/apply/patent-center. To file a preliminary
amendment to the specification, claims, and/or abstract in DOCX format on
the same day as the application, the preliminary amendment must be filed as
a follow-on submission in the application. Applicants are advised that a
preliminary amendment to the specification, claims, and/or abstract cannot
be filed in DOCX format as part of the initial submission of a new
application.
Because a preliminary amendment to the specification, claims, and/or
abstract filed on the same day as the application is part of the original
disclosure of the application, the filing of such a preliminary amendment
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in PDF format will incur the non-DOCX surcharge. However, a preliminary
amendment filed in PDF format after the filing date of the application will
not incur the non-DOCX surcharge because the preliminary amendment is not
part of the original disclosure of the application and thus is not required
to be in DOCX format.
The USPTO is aware of some confusion from information that was made
publicly available on the USPTO website or was presented in DOCX training
sessions. To the extent the information suggested or indicated that
preliminary amendments can be filed in PDF format and be included in the
initial filing without incurring the non-DOCX surcharge, the information
was confusing and/or incorrect.
Under the conditions set forth below, an applicant who relied on the
information that was made publicly available on the USPTO website or was
presented in DOCX training sessions may file a petition under 37 CFR 1.183
requesting waiver of the non-DOCX surcharge set forth in 37 CFR 1.16(u):
1. The application must have been filed prior to the date that is one
week after the publication date of this notice in the Official
Gazette (note that publication will occur approximately three
weeks after this notice is signed and posted on the USPTO
website);
2. A preliminary amendment to the specification, claims, and/or
abstract in PDF format must have been filed on the filing date of
an application otherwise filed in DOCX format (e.g., the
specification, claims, and/or abstract that were not part of the
preliminary amendment were filed in DOCX format); and
3. A notice requiring the non-DOCX surcharge under 37 CFR 1.16(u) due
to the preliminary amendment being filed in PDF format must be
outstanding because the non-DOCX surcharge has not yet been paid.
A grantable petition under 37 CFR 1.183 requesting waiver of the non-
DOCX surcharge based on the information provided by the USPTO must include
a statement that petitioner relied upon confusing or incorrect information
in filing the preliminary amendment in PDF format and must distinctly
identify the source (e.g., specific training session) of the information.
The petition must also be accompanied by the petition fee set forth in
37 CFR 1.17(f). However, the petition fee will be refunded if the petition
is granted. Note that the mere filing of a petition does not stay the time
period for reply to an outstanding notice. See 37 CFR 1.181(f). In order
for the petition to be a complete reply to the non-DOCX surcharge
requirement, the petition must be grantable. If the petition is not
grantable, the period for response will continue to run from the notice
requiring the non-DOCX surcharge.
Applicants are reminded that they can avoid filing a preliminary
amendment when filing a new application by incorporating any desired
amendments into the text of the specification, including a new set of
claims, even where the application is a continuation or divisional
application. For further information, see the Manual of Patent Examining
Procedure (MPEP) (9th Edition, Rev. 07.2022, February 2023), Section 201.06
(c), subsection III, and Section 714.01(e).
Filing an Auxiliary PDF of the application
When filing a nonprovisional utility patent application in DOCX format,
applicants have the option to submit an Auxiliary PDF of the application
without incurring the non-DOCX surcharge. However, applicants must follow
the process for submitting an Auxiliary PDF of the application set forth in
the quick reference guide that is accessible from the DOCX information
webpage at https://www.uspto.gov/patents/docx. See "Extension of the Option
for Submission of a PDF With a Patent Application Filed in DOCX Format,
" 88 FR 37036 (Jun. 6, 2023) (the 2023 Notice) and "Extension of Period To
Allow Submission of a PDF With a Patent Application Filed in DOCX Format,
" 87 FR 77812 (Dec. 20, 2022) (the 2022 Notice). The non-DOCX surcharge
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will be required if an applicant does not follow the process for submitting
an Auxiliary PDF of the application set forth in the quick reference guide,
but instead uploads a PDF version of the application in some other manner
during the application filing process or after filing of the application.
By following the process for submitting an Auxiliary PDF of the application
set forth in the quick reference guide, the Auxiliary PDF will be
automatically assigned the document description "Auxiliary PDF" and the
document code "AUX.PDF." This will allow the USPTO, applicants, and members
of the public viewing the application file to distinguish the Auxiliary PDF
of the application from the specification, claims, and abstract that will
be or has been used during examination.
Contact information
For questions or assistance regarding filing in DOCX, please contact the
Patent Electronic Business Center at ebc@uspto.gov or 866-217-9197, Monday
through Friday, 6 a.m. to midnight, ET.
For questions or assistance regarding filing a petition under 37 CFR
1.183, please contact the Office of Petitions at 571-272-3282.
For questions regarding this notice, please contact the Office of Patent
Legal Administration at 571-272-7701 or PatentPractice@uspto.gov.
May 17, 2024 KATHERINE K. VIDAL
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1523 OG 293]