For part 2, covering updates as of January 17, 2024, please click here.
Starting April 3, 2023, the United States Patent & Trademark Office (“USPTO”) will begin assessing a surcharge of $400 (large entity)/$200 (small entity)/$100 (micro entity) for electronically filing certain patent applications in PDF format. This surcharge is designed to encourage applicants to file using the DOCX format supported by Microsoft Word 2007 and higher, Google Docs, and other popular word processing applications. To assist us in continuing to provide you with the most cost-effective US patent application filing service, we are providing the below information to guide you in providing us with properly formatted patent applications.
WHICH APPLICATIONS DOES THE USPTO WANT IN DOCX?
The DOCX format requirement applies to new utility non-provisional applications, Paris Convention conversion applications, continuation applications, and divisional applications. This includes applications filed in non-English languages. The specification, claims, and abstract of these applications must all be filed in DOCX format.
ARE THERE APPLICATIONS THAT CAN STILL BE FILED IN PDF FORMAT?
Provisional patent applications, PCT National Stage application filings, design patent applications, and plant patent applications may be filed in PDF format without incurring the surcharge. However, such applications may be filed in DOCX format, if desired.
IS DOCX SECURE?
Yes, the DOCX format is secure. Any metadata found in the application during the validation process during application upload will be automatically removed by the USPTO prior to submission.
WILL CHEMICAL STRUCTURES, MATHEMATICAL EQUATIONS, AND SYMBOLS BE UPLOADED CORRECTLY?
Yes. DOCX fully supports equation editing software (e.g., MathML), and chemical structure editing software (e.g., ChemDraw). When using an approved font (see below), the USPTO has determined through extensive testing that DOCX documents filed through its system should exhibit high fidelity, no errors, and correct rendering.
WHAT ARE THE SPECIFIC REQUIREMENTS FOR FORMATTING THE APPLICATION TEXT WHEN FILING IN DOCX?
Applications must meet the following requirements:
- The Specification, Claims, and Abstract must all begin on separate pages
- No macros may be included in the application document
- Pages must be numbered consecutively, with page numbers located centrally below the text
- The specification lines of text must be 1.5 or double-spaced
- Paper size must be A4 or 8½ inches x 11 inches
- The top, bottom, and right margins must be at least 2 cm (3/4 inch), and the left margin must be at least 2.5 cm (1 inch)
- The text must be formed in a single column
- Any tables in the text must maintain column and row alignment
- Only approved fonts (including Arial, Courier New, and Times New Roman – see full list below) may be used, preferably in 12 point size: https://www.uspto.gov/sites/default/files/documents/DOCX%20Supported%20Font%20List%20_4_15_20.pdf)
WHAT IS PANITCH’S RECOMMENDATION FOR PROCEEDING WITH FILING?
We will not check applications for errors (other than basic, readily apparent errors) unless you request us to do so. If requested to check an application, or if we must correct an application filed in DOCX format based on errors detected by the USPTO during the validation process, we will invoice for the time spent reviewing and/or correcting the application.
If we receive only a PDF copy of the application, or both PDF and Word versions, our default will be to file the application in PDF format and pay the surcharge, absent instructions from you to the contrary. If, on the other hand, we receive only a Word version of the application, we request that you provide us with your choice as to how to handle the filing: whether we should make a PDF from the Word version and file with the surcharge or file in DOCX format.
Our present recommendation is to file applications in PDF format, with the surcharge, because we anticipate that, at least initially, the time spent reviewing DOCX filings will likely exceed the PDF surcharge, particularly for micro entities and small entities. However, we will follow your indicated preference for DOCX or PDF filing. Note that we intend to reevaluate the issue on an ongoing basis as more applications are filed in DOCX format. Should our recommendations change, we will inform you.
DOES THE USPTO HAVE ADDITIONAL MATERIAL YOU CAN REVIEW?
You can read more about the USPTO’s DOCX program here: https://www.uspto.gov/patents/docx.
If you have any questions about the USPTO’s formatting and DOCX requirements, please email us at info@panitchlaw.com or call (215) 965-1330.