The non-DOCX surcharge takes effect, and the DOCX file the applicant uploads is the application of record

2024-01-17Costs

Setting and Adjusting Patent Fees During Fiscal Year 2020, 85 Fed. Reg. 46932 (Aug. 3, 2020), non-DOCX filing surcharge, 37 C.F.R. 1.16(u), effective January 17, 2024 under Setting and Adjusting Patent Fees During Fiscal Year 2020, 88 Fed. Reg. 36956 (June 6, 2023)

The surcharge in Section 1.16(u) of Title 37 of the Code of Federal Regulations applies from January 17, 2024 to every nonprovisional utility application filed under Section 111 of Title 35 of the United States Code, continuing applications included, whose specification, claims or abstract is not filed in DOCX format. Design, plant and provisional applications are exempt. The fee is $400 undiscounted, $160 for small entities and $80 for micro entities, against a combined undiscounted basic filing, search and examination fee of $1,820. The USPTO adopted the surcharge in its fiscal year 2020 fee rule to recover the cost of converting image-based filings into text, with an original effective date of January 1, 2022, and delayed it four times. Under a June 2, 2021 notice the Office considers "the DOCX documents filed by applicants to be the authoritative document," asks applicants to check the Office-generated versions as soon as practicable, and does not expect to grant a request to correct the record that is filed more than one year after submission. A separate June 6, 2023 notice extended until further notice the option to upload an applicant-generated PDF alongside the DOCX, which can be relied on by petition under Section 1.182, with the petition fee waived, to correct a conversion discrepancy.

What it changesFor a program filing at volume the surcharge is an avoidable cost. At $400 an application it adds about a fifth to the undiscounted government filing fees, so outside counsel guidelines should require DOCX filing of the specification, claims and abstract and should treat the surcharge as a non-reimbursable cost. The larger risk is in the content. Machine learning applications carry equations, loss functions, pseudocode and tables, and the DOCX the applicant uploads is the authoritative version, so a symbol the validator drops or a formula carried in an unsupported object becomes the text of the application. Every filing should go in with the applicant-generated PDF as a backup, and someone other than the drafter should compare the Office-generated PDF against the source within days of filing, because the correction window runs from submission and the backup route works only if the PDF was filed with the application.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

This is general information about a published decision, agency guidance or piece of legislation. It is not legal advice and does not create an attorney-client relationship. Items concerning offices outside the United States are reported for information only and are not counsel on the law of those countries.