In August, the U.S. Patent and Trademark Office announced that it planned on raising various fees. One of those involved an additional $400 fee for non-provisional utility application filings with a PDF specification. This fee would be avoidable if the specification was filed in DOCX format. The USPTO's electronic filing system (EFS) has supported DOCX specification filings for over two years.
As of the time of this writing, the USPTO has not made a final decision on this issue. In anticipation of the fee increase, patent attorneys, agents, and paralegals have been trialing DOCX uploads. So far, the EFS DOCX parser has proven to work well with many files, but it is rather fragile in some cases, and outright buggy in others.
DOCX is an open standard for word processing files. Since Microsoft Word 2007, it has been the default choice for the save format of that application. Unlike the proprietary DOC files that Microsoft Word used to produce, DOCX files are structured in XML. This makes them more portable between word processing applications and easier to parse.
The USPTO justified its encouragement of DOCX adoption based on the format's ability to facilitate instant feedback in EFS regarding common document errors, improved searchability, metadata removal, and general compatibility. Behind the scenes, it is likely that the USPTO intends to automate some of its application intake processes, such as automatically detecting the number and type of claims and classifying applications into art units.
We have been testing the USPTO's DOCX upload options in EFS. What we found was not particularly encouraging. Most notable was that EFS will often reject a DOCX specification upload, stating that it found one or more particular types of errors in the application file. But upon inspection, we found that the indicated errors frequently did not exist. Instead, the parser flags false positives when it encounters legitimate formatting or content that it cannot properly handle.
One such issue relates to font support. For one particular application, we received dozens of error messages alleging that the file contained text in the unsupported Century font. We thoroughly reviewed the application and determined that there was no Century characters present. After some trial and error, we ultimately determined that this error was actually being caused by our custom Microsoft Word styles. These styles allow the drafter to rapidly format applications so that they are consistent with one another and pleasing to the eye. But some of our styles had been based on other styles. Apparently this was problematic, because the errors went away once we changed these styles to be based on "no style".
Even worse, one of our applications kept getting rejected because it allegedly contained two or more of the specification, claims, and abstract (EFS DOCX support requires these three sections of the application be uploaded in three separate DOCX files). Yet, the file clearly contained only the specification. After manually removing sections of the application in a systematic fashion, we found the culprit -- the USPTO's DOCX parser apparently will not accept the word "conclusion" on a line by itself. When placed in a sentence, no problem. But on its own, "conclusion" consistently resulted in a rejected upload. Again, the error provided had nothing to do with the purported problem with the DOCX file. Only after hours of manual debugging were we able to satisfy EFS.
Needless to say, DOCX support is not ready for prime time. Practically speaking, an attorney or agent up against a bar date may find that he or she cannot upload a reasonably-formatted DOCX file, and may be unable to address the issue in the necessary time frame due to the DOCX parser's obtuse and misleading error messages. Instead, he or she may have to just eat the $400 fee and file a PDF.
But that's not all. When you can successfully upload a DOCX file, the USPTO converts it into a PDF. Afterward, EFS provides a link to the PDF and displays the message, "The PDF(s) have been generated from the docx file(s). Please review the PDF(s) for accuracy. By clicking the continue button, you agree to accept any changes made by the conversion and that it will become the final submission." This effectively puts the onus on the attorney or agent to manually check, line by line, that the USPTO's conversion from DOCX to PDF is correct. Doing so is especially important if your application contains complex mathematical expressions or chemical formulas.
We are not to the first to point out some of these issues. I highly recommend an article by Carl Oppedahl criticizing the USPTO's implementation of DOCX.
While the USPTO may have legitimate reasons for transitioning to DOCX, the fundamental defects in the DOCX parser reflect a lack of adequate software quality assurance. Thus, it needs to address these problems before imposing the $400 fee on non-DOCX specification filings. If anything, the USPTO's attempt to reduce its application intake burden currently transfers much of that burden to individuals preparing the applications.
