OBWB IS READY FOR DOCX
The USPTO is setting DOCX as the preferred file format for all non-provisional applications filed on or after January 1, 2022. DOCX filings are presently limited to the specification, claims, and abstract for new non-provisional utility applications filed under 35 U.S.C. Section 111, noting that the USPTO plans to expand their system to accept DOCX for other application papers. It will still be possible to file an application in pdf format, however at an additional cost of US$400. OBWB is presently capable to file in the DOCX format, thus avoiding the unnecessary and unwanted additional fees come January. OBWB is also internally reviewing drafting, filing, and review procedures as well as document retention policies in view of the DOCX ‘requirement’ being imposed, so as to limit potential prosecution hiccups and litigation gaffes.
Filing in DOCX has been possible for a few years, but many firms, including OBWB, were hesitant to adopt DOCX filing. The original procedures for the DOCX filings at the USPTO involved using USPTO software to convert the DOCX filing into a PDF-formatted document, which then needed to be reviewed, corrected as necessary, and accepted by the filer as the “official” copy of the application as filed. Due to errors in the conversion process, limited review time, and many other issues associated with the DOCX filings, practitioners were justifiably unwilling to click the “accept” balloon designating the converted PDF as the evidentiary copy.
In response to public comment, the USPTO announced on June 2nd that an applicant may rely on the DOCX version, as filed, as the source or evidentiary copy of the application as originally filed. The USPTO and EPO have also published guides and rules regarding the format of the DOCX to be submitted.
Unfortunately, reliance on the DOCX version as filed will also inevitably cause some issues. The USPTO notes in the June 2nd FR notice that the structured text format is flexible and may facilitate the examination process. The USPTO touts DOCX filings as increasing efficiencies, providing higher data quality, a smarter interface, privacy, improved application quality, and compatibility, among other benefits. However, many practitioners have commented that the DOCX files may render differently, depending upon the system and software used and have noted that “there are several word processors that can create and save documents in variants of DOCX formats….” While the blog referenced here focused on the DOCX-to-PDF conversion, similar concerns remain with respect to docx variants and what may result as the “evidentiary copy” of an application as filed.
Formatting, equations, chemical formulae, tables, and other aspects of an application may thus appear “correct” when reviewed and accepted by the filer, as typically reviewing on the system and software that originally generated the DOCX, but the application “as filed” may differ when finally published by the USPTO or viewed by a user on other systems or software. Similar concerns have also been raised for international (PCT) applications, where a submitted DOCX document is converted to an XML format as the record copy, WIPO noting that “most applicants remain concerned over the perceived risks of processing a full-text application and continue filing PDF despite the additional 100 Swiss franc reduction for filing in XML.” If not timely reviewed and corrected, it is possible that a US, EP, or PCT application may become unviable, such as by having lost matter important to the invention but rendered inadmissible as being considered new matter simply due to a conversion error at the time of filing. In addition to prosecution concerns, the different renderings across systems and software, or conversion to XML, also raise many issues that litigators are sure to try to use to their clients’ advantage. Additionally, this practitioner notes that the USPTO occasionally “loses” an electronic document after it is filed, which would also raise a plethora of issues with respect to both prosecution and litigation; electronic filing receipts may be useful to prove a document was filed, but cannot prove what was actually filed. Further, as noted in the June 2nd FR notice, the USPTO document retention policy will result in disposal of the original DOCX document as filed after one year, well before publication or examination even begins, let alone the litigation that may ensue years later. Proving what was actually filed, and proving what was the “original” “as filed” document electronically submitted, may be required, and such may be required years after the electronic submission occurred.
As a patent prosecutor, it is hoped that the transition to DOCX goes smoothly. Nonetheless, the patent litigator will always tell you to prepare for the worst. In view of the numerous requirements for submissions as set forth by the USPTO, EPO, and WIPO, as well as the potential prosecution and litigation issues that may eventuate due to the DOCX submission ‘requirement’ being imposed, OBWB is proactively reviewing internal policies and procedures to (i) draft applications meeting the suggested OOXML formatting for new application submissions in the US and abroad; (ii) ensure careful and timely review of the image file wrapper following the filing of an application, and (iii) retain documents so as to be able to prove which DOCX file was actually submitted to a patent office. OBWB will be ready for DOCX come January 2022.
 The Federal Register (“FR”) notice is published at: https://www.govinfo.gov/content/pkg/FR-2021-06-02/pdf/2021-11256.pdf (“June 2nd FR notice”).
 See https://www.uspto.gov/sites/default/files/documents/Quick%20Start%20Guide%20DOCX%20Intake.pdf and https://www.epo.org/law-practice/legal-texts/official-journal/2020/04/a45.html, for example.
 See https://www.uspto.gov/blog/director/entry/modernizing-patent-filing-with-docx.
 See https://www.wipo.int/edocs/mdocs/pct/en/pct_wg_14/pct_wg_14_8.docx).