USPTO Surcharge for Non-DOCX Format Filing to Start April 3, 2023
By Denise Blocker, OBWB Director of Operations
The U.S. Patent and Trademark Office has extended the effective date of the $400 surcharge for new non-provisional utility patent applications where the specification, claims, and abstract are not filed in DOCX format to April 3, 2023. The surcharge will apply to all Paris Convention and non-convention applications filed under 35 U.S.C. 111(a), including divisional, continuation, continuation-in-part, and PCT bypass continuation applications. Other documents and submission types, including drawings, may still be filed in PDF format without incurring a surcharge.
DOCX offers a safe and stable basis for processing intellectual property documents, and it is anticipated that the filing of applications in DOCX format will increase efficiency and accuracy in the examination process.
DOCX submissions must be done in separate documents, i.e., one each for the specification, claims, and abstract. Application documents, including those that contain chemical structures and mathematical formulae, will be rendered correctly when filed in DOCX format using portrait orientation and an approved font. A list of approved fonts may be found here.
In the event any discrepancies or errors are introduced with the DOCX format, the USPTO has explicitly stated that any claim for priority or benefit will be treated as an incorporation by reference of any subject matter contained in the parent application. However, the USPTO has also extended the period during which a PDF version of an application may be filed with the DOCX version without incurring the surcharge until June 30, 2023.
