Last month I wrote about USPTO Director Kathy Vidal’s statement in October (at the AIPLA Annual meeting) that the PTO was going to deign to continue to let applicants file pdfs with their new patent application filings. What I didn’t make clear – because it wasn’t clear to me – was that the USPTO was still planning to impose a $400 fee for anyone who didn’t do the initial filing in “docx” format. I also noted that as of November 30, I still hadn’t seen anything in writing about this.
On December 19, Director Vidal published a Director’s Blog post, and on December 20, the PTO published a Federal Register notice, stating that indeed, applicants would continue to be allowed to file pdfs with their “docx” filings…but that as of January 1, 2022 there would be a $400 fee if you didn’t file in docx. In other words, you could only file the pdf if you also filed the docx file.* As of July 1, you’d get hit with the $400 fee if you had the chutzpa to include a pdf version of the application with your initial filing.
(Because of the high likelihood of errors entering an application when the PTO converts it from the docx version submitted by the applicant to the version to be used by the PTO, most practitioners were planning to continue to file in pdf and to pass the $400 fee on to their clients. Since the PTO estimated that forcing applicants to file in docx would save the PTO $3.15 per application, far below the fee to be imposed, the more cynical among us viewed this whole docx thing as a surreptitious attempt by the PTO to increase its revenues.)
Enter David Boundy and the group of dedicated practitioners on Carl Oppedahl’s listserv groups. By the end of the business day on December 23, David had drafted and, with input from many, revised a letter to Director Vidal, collected signatures from 117 practitioners on that letter, and sent it to director Vidal. The letter explained some of both the practical and legal problems with proceeding with the requirement for “docx” filing, and asked that applicants continue to be allowed to file in either docx OR pdf for at least another six months. The letter also hinted that if the PTO were to proceed as planned, it would likely have a lawsuit on its hands.
On December 24 Director Vidal phoned David and, in a nutshell, said that a notice would be published this coming week giving applicants “breathing room”. We’ll see how much time that is, but the expectation is that, come January 1, we’ll still be able to submit our applications in pdf format, without penalty.**
This is a good first step, but considering the myriad ways in which the PTO has repeatedly lied to, deceived, misled, and misrepresented to the public, the Office of Management and Budget, and the Small Business Administration – even its F.R. notice of December 20 – it would be best if the PTO would rescind this docx nonsense.
*To add insult to injury, you’d only be able to include the pdf document if you filed using PatentCenter, the combined filing and document access system that the PTO has been working for several years, a system has many bugs (some that were reported in alpha testing three years ago that still haven’t been fixed) and still lacks many features. The PTO’s handling of PatentCenter has been much like its handling of docx: no one to talk to, and no responsiveness.
**According to Carl on his blog, AIPLA, IPO, and Brad Forrest also told the Director that docx is not ready for prime time.
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