In August of 2020, the Office announced that for applications that are not filed in DOCX format after January 1, 2022, such filings would carry a surcharge of $400 for large entities under 37 C.F.R. § 1.16(u).  Last November, the Office announced that the effective date for assessment of the surcharge would be delayed until January 1, 2023 (see "USPTO News Briefs").

The Office has been encouraging Applicants to begin filing patent applications in DOCX format, and by allowing Applicants to submit an applicant-generated PDF version of applications filed in DOCX format, the Office hopes to help address concerns some Applicants have raised about the DOCX format, as well as allow Applicants to get acclimated to the process of filing applications in DOCX format.  The Office notes that the option of providing an applicant-generated PDF version of applications is being offered on a temporary basis, beginning on April 28, 2022 and ending (at least as of now) on December 31, 2022.  Applicants who submit an applicant-generated PDF version of applications filed in DOCX format will not be required to pay any additional fees, such as application size fees, for the PDF version.

The Office has created a new document description for the optional applicant-generated PDF ("Auxiliary PDF of application") and a new document code ("AUX.PDF").  The Office also notes that the option of providing an applicant-generated PDF version of applications will not be available for applications filed via the EFS-Web.

The notice indicates that the new option will "safeguard the applicant should any conversion discrepancies have taken place" when filing applications in DOCX format.  In particular, Applicants who submit an applicant-generated PDF version of applications filed in DOCX format will be able to rely on that PDF if a discrepancy occurs during the filing process.  The notice also indicates that if an error or discrepancy in the record that resulted from filing an application in DOCX format is identified, Applicants should promptly notify the Patent Electronic Business Center (EBC) at 866–217–9197 (toll-free), 571–272–4100, or ebc@uspto.gov so the EBC can investigate the issue.  For corrections to the record that are supported by the validated DOCX version of the application, the Office notes that Applicants can file a petition under 37 C.F.R. § 1.181.  For corrections to the record that are supported by the applicant-generated PDF, the Office notes that Applicants should file a petition under 37 C.F.R. § 1.182.  For petitions filed under § 1.182, the Office will be waiving the fee under 37 C.F.R. § 1.17(f) during the option's temporary period.  According to the notice, the applicant-generated PDF that accompanies a DOCX filing will not become part of the permanent record unless a petition is filed requesting that the Office correct the record in view of the applicant-generated PDF.

The Office concludes the notice by stating that:

Applicants are strongly encouraged to review their applications, including the USPTO-generated PDF, shortly after filing the application to identify any errors or discrepancies in the record, as discussed above.  The applicant should file any necessary petition to correct the record early in prosecution and promptly after discovering any errors or discrepancies.

For additional information regarding this topic, please see:

• "USPTO News Briefs," November 22, 2021
• "USPTO Support for Filing in DOCX Format Still a Work in Progress," January 7, 2020
• "USPTO News Briefs," November 12, 2019