April 2023 Brings Changes in Form and Format at the USPTO
March 23, 2023
By: Mary Lou Wakimura and Alexander Adam, Ph.D.
Noteworthy changes are coming soon at the United States Patent and Trademark Office (USPTO) in its efforts to modernize and streamline US patenting processes and systems. The changes affect the way patent applications are filed, and the way patents are granted. Applicants have the ability to file patent application-related documents in DOCX format, and come April, doing so avoids filing surcharges. DOCX is a word processing file format based on open standards, including Extensible Markup Language (XML), which is supported by many popular word processing applications. Also, starting in April, the USPTO will begin issuing patent grants in PDF format instead of the traditional Ribbon Patent paper form. The electronic patent grants (called "eGrants") will be available on the day of grant.
1. DOCX Filing Format – April 3, 2023
- Starting April 3, 2023, a patent application's specification, claims, and abstract not filed in DOCX format will incur a filing surcharge of up to $400. Small entity and micro entity discounts will apply. The surcharge applies to non-reissue (original) utility non-Provisional applications filed under 35 U.S.C. §111.
- Potential benefits for the applicant include, for example, automated error checking of the application document at the filing stage and feedback from the USPTO, which is expected to reduce the need for corrections down the line.
- Applicants have the option to upload a backup (auxiliary) PDF version of their patent application with their DOCX version to preserve chemical structures, equations, and fonts that the PTO server may not consistently handle well. This option extends through June 30, 2023, and is only available when filing on Patent Center (versus EFS-Web). During this time (ending June 30, 2023), any additional fees due to application size are waived such that there are no USPTO fees associated with the auxiliary, applicant-generated PDF.
- Additional information about DOCX filing format and answers to frequently asked questions can be found at the USPTO’s dedicated webpage: https://www.uspto.gov/patents/docx
2. Electronic Patent Grants (eGrants) – April 18, 2023
- Starting April 18, 2023, the USPTO will begin issuing patent grants in PDF format instead of the traditional Ribbon Patent paper form. According to the USPTO, the electronic patent grants (called "eGrants") to patent recipients promise to: (a) reduce paper waste, (b) reduce wait time in the period after payment of the issue fee to the issued patent in hand, and (c) deliver the commonly desired PDF form of the patent on the day of issue.
- The USPTO has stated that, during a transition period, the Office will provide a paper copy of the electronic patent grant as a ceremonial copy, free of charge. According to the USPTO website, “The ceremonial paper copy will be a copy of the electronically issued patent reminiscent of the paper patents, bound with a cover sheet with both an embossed seal and the signature of the USPTO Director. The ceremonial paper copy will indicate that this is a ceremonial copy of a patent that was officially issued in electronic form.” The duration of the transition period is not determined, but we are to receive prior notice when the transition period ends. Thereafter, a ceremonial copy will be available for a fee.
- Since eGrants may be issued shortly after paying the issue fee and sooner than applicants are accustomed to, it will be important to file any continuing application prior to issue-fee payment so as not to jeopardize co-pendency.
- Additional resources about eGrants and answers to frequently asked questions can be found at the USPTO’s dedicated webpage: https://www.uspto.gov/patents/apply/patent-center/egrants
The transition to DOCX and eGrants is expected to be well received by the patent community. Please contact us if you have any questions or want further information about the DOCX format or eGrants.