The Trains, Planes and Automobiles of Correcting DOCX-Related Errors

“We found significant delays in the processing of patent applications with actual or perceived (i.e., uploaded documents ‘missing’ from the official file) DOCX-related errors.”

DOCXSimilar to Steve Martin and John Candy’s calamitous odyssey in the classic 1980s film Planes, Trains and Automobiles, patent practitioners are experiencing their own misadventures when filing applications in the DOCX format. As of January 17, 2024, the U.S. Patent and Trademark Office (USPTO) mandated submitting all specification, claims and abstracts of non-provisional applications filed under 35 U.S.C. 111(a) in DOCX format or incurring a $400 surcharge (non-discounted). The DOCX mandate came after thousands, and likely tens of thousands, of practitioners, directly or indirectly, communicated their significant procedural, technical, legal, ethical, professional liability, and financial concerns to the USPTO as you can read HERE, HERE, HERE, HERE, HERE, and HERE. As David Boundy of Potomac Law Group PLLC explained HERE, DOCX was not designed for archival purposes or to ensure that on-screen behavior is uniform across all computers.

In apparent response to such concerns, the USPTO has extended until further notice the option to upload a backup (auxiliary) PDF version of their application with their DOCX version. While no fees are associated with this auxiliary PDF (HERE), doubts remain as to how the auxiliary PDF can be relied upon to correct USPTO rendering mistakes (HERE).

According to the Frequently Asked Question, “How do I report and/or correct any perceived discrepancies in my file?”, on the USPTO’s DOCX website (HERE), applicants are directed, with some caveats, to file petitions under Rule 1.181, 1.182, or rely on Rule 1.57(b) to incorporate by reference disclosures earlier filed under Rule 1.55 or Rule 1.78.

In order to identify the types of errors which are occurring and how these errors are being addressed by applicants and the USPTO, we searched Petition.ai’s database of over 1 million patent petition decisions filed with the USPTO. We identified 19 petitions related to correcting issues in 16 unique DOCX-filed applications. All 16 decisions pertained to errors that occurred in filings before January 17, 2024, when the DOCX surcharge mandate went into effect. We consider this sample the tip of the DOCX-iceberg and fully expect, as additional DOCX-filed applications are published and corresponding DOCX-related petitions become public, we will learn more about the prevalence of DOCX-associated errors and how the USPTO is handling practitioners’ attempts to correct them.

In our sample of 19 petitions, we found four main types of errors:

  1. DOCX conversion errors
  2. Applicants’ inadvertent submission of extraneous documents
  3. DOCX-submitted documents missing from the electronic file, and
  4. Fees charged to correct USPTO-generated errors.

DOCX Conversion Errors

Table 1 provides examples of errors created by the USPTO’s DOCX conversion process during filing, publication, or issuance of the patent. None of these USPTO-generated behind-the-scenes changes would be easily detected by applicants, but each had a significant impact on their applications.

Highlights from Table 1 include:

  • Decision A – The seemingly innocuous conversion of line breaks into paragraph breaks throughout a claim set resulted in $8,300 excess claim fees
  • Decision B – A page break created a blank page 2 of the specification, prompting a Notice of Omitted Items
  • Decisions C, D, and E – An inserted page break caused a portion of the claims to spill over onto the Abstract sheet, and
  • Decision F – Equations were duplicated in two instances.
  • Decisions B – F – Applicant’s submission of an amendment containing a substitute specification under Rule 1.121(b)(3) was sufficient to correct the USPTO’s errors. The accompanying Rule 1.182 petitions were deemed unnecessary, despite USPTO’s guidance to file a Rule 1.182 petition in this circumstance.
  • Decision G – Applicant filed in DOCX format along with an Auxiliary PDF. When the patent application published in March 2023, significant errors were made during DOCX-conversion including font changes, character changes, spacing changes, paragraph numbering, paragraph formatting changes, and equation formatting changes (an was twice changed to ). This applicant filed a Rule 1.181 petition to correct the electronic record based on the DOCX submissions filed less than one year earlier. During the 190 days the USPTO took to dismiss the petition, the patent issued in July 2023 with more DOCX format errors. The decision styled under Rule 1.182 (not Rule 1.181 as filed) indicated there are other ways to correct patent applications (Rule 1.221, MPEP 1130) or correct an issued patent (Rule 1.322, MPEP 1480), so the petition was “dismissed as inappropriate”. Noteworthy, Decision G did not address the applicant’s request that the Auxiliary PDF be kept in the file as part of the permanent record.

Applicant’s Inadvertent Submission of Extraneous Documents

The second type of error arose by applicant’s inadvertent submission of extraneous documents. Unlike the legacy PDF filing process, where only one version of the specification, claims, abstract and figures is submitted, to avoid DOCX processing risks, applicants have been submitting auxiliary PDFs of their filing papers. This duplicate filing process introduces the opportunity for mistakes such as those identified in Table 2.

When applicants file a paper which does not belong in the patent application, the procedural error can often be corrected by way of a Rule 1.59 petition to expunge. Applicants’ petitions to expunge such inadvertently filed documents were dismissed by the Office of Petitions in Decisions H, I, and J under the rationale that any specification, figures or claims which are submitted on the application’s filing date are un-expungable under Rule 1.59(a). Applicants were given the option of filing a Rule 1.83 petition to request that the rules be waived or suspended. It will be interesting to see if any such petitions are filed and how they are handled. However, when the similar fact pattern came before a Technology Center Group Director in Decision K, the petition was granted under 1.59(b) and the erroneously submitted auxiliary PDF removed from the official file.

DOCX-Submitted Documents Missing from the Electronic File

A third type of error occurred when documents submitted via DOCX were lost within the USPTO’s electronic file records. Examples of applications which appeared in the official electronic file to be missing the specification, claims, abstract or figures, even though such documents had been submitted in DOCX format, are shown in Table 3. Other users have reported DOCX-submitted documents missing from their applications too, a problem which some have attributed to glitches in Patent Center.

When required filing papers are missing, the USPTO holds the application as incomplete in view of applicant error and postpones granting a filing date until applicants respond to the Notice of Missing Parts or Notice of Omitted Items. In Decisions L, M, N and O, applicants filed petitions under Rule 1.53(e) along with amendments to enter the figures or claims and obtain their filing date. In Decisions L and M, the USPTO retrieved the originally filed figures and scanned them into the electronic file. While the USPTO’s DOCX webpage suggests filing a Rule 1.181 petition in this situation, the Office readily accepted Rule 1.53 petitions. In several instances, it appeared a call to the Electronic Business Center may have resolved the initial problem without filing any type of petition. However, ever after correction, these DOCX glitches can haunt applicants down the road, as prosecution delaying errors attributed to applicant impact future Patent Term Adjustment (PTA) determinations.

Fees Charged to Correct USPTO-Generated Errors

The last type of error involved fees being charged by the USPTO to correct USPTO-generated errors made during the DOCX submission. Table 4.

When the USPTO’s DOCX conversion process transformed line breaks into paragraph breaks throughout a claim set, Applicants were charged $8,300 in excess claim fees (Decision A). The initial request for a refund was dismissed after 232 days, with the rationale that since applicants had provided a blanket authorization to charge any necessary fees, the excess fees had not been paid in error. A Rule 1.181 petition with a renewed request for refund is awaiting decision.

The USPTO has assured the IP community it will waive the petition fee under 37 CFR 1.17(f) for petitions filed under Rule 1.182. In several cases, the Rule 1.182 petition fee was not initially charged (Decision C), was waived pursuant to 87 FR 26226 (Decision F), or was refunded (Decisions L, M2 and N). However, Decisions B, D and E did not waive or refund the petition fee.

Even though the IP community was assured that no fees would be associated with providing a backup, auxiliary PDF, $420 in application size fees were charged for Decision P’s Auxiliary PDF. Relying on applicant’s blanket statement for extra fee authorization, the Office of Petitions maintained the decision that the application size fees had not been paid in error, so it would not be refunded.

DOCX-Induced Errors Cause DOCX-Induced Delays

As a former USPTO employee for 20 years, I recall a saying at the Office: trying to get an off-track patent application back into the examination process is like hoisting a refrigerator back onto a conveyer belt. Our survey shows the USPTO has a difficult time getting applications with DOCX-induced errors back onto the patent examination conveyer belt.

We found significant delays in the processing of patent applications with actual or perceived (i.e., uploaded documents “missing” from the official file) DOCX-related errors. Since submission in DOCX format, applications A, B, F, I, J, and O have languished in pre-examination status for an average of 433 days from filing date, with a range of delay being 213 – 585 days.

Typically, the USPTO removes petitioned applications from the examination pipeline so no substantive action on the merits occurs until after the procedural matter is decided. In several instances related to DOCX-related errors, this was not done. For example, Decision K, requesting an extraneous Auxiliary PDF be expunged from the application, was mailed 353 days after filing and 22 days after an intervening action on the merits. Another example, Decision G, requesting the USPTO correct significant format errors in their publication, was dismissed 190 days after filing and 156 days after the USPTO repeated the DOCX rendering errors in the issued patent.

DOCX-related requests and petitions are slowly decided—on average in 167 days. The shortest pendency of five days (Decision O2) indicates the USPTO has the ability to process the petitions in a more expeditious manner. With petition processing waits up to 353 days (Decision K), these extensive petition processing delays to correct applications which have run afoul of the DOCX filing requirements contradict one of the USPTO’s rationale for adopting the DOCX process—to strengthen their ability to examine applications quickly and effectively.

What’s an IP Practitioner Supposed to Do?

In order to master the USPTO’s DOCX formats, practitioners have been recently advised to “[c]ompare the documents to ensure no unintentional changes are there. Mark this is a mandatory step. You must compare the User-submitted DOCX to the USPTO-generated DOCX; the User-submitted DOCX to the USPTO-generated PDF; a User-submitted PDF to the USPTO-generated DOCX; and the User-submitted PDF to the USPTO-generated PDF.”

To quote Steve Martin’s character in Planes, Trains and Automobiles, “But how are we supposed to go with the flow” when the arduous, time-consuming review time for each and every DOCX submission would easily cost patent practitioners and inventors more than the $400 (undiscounted) non-DOCX surcharge. Attempts to fix the DOCX-related errors which arose in Applications A-P surveyed here have likely cost significantly more than $400 in patent practitioners’ time and USPTO filing fees.

As noted HERE, while larger firms with more staff may have the time and resources to review the various documents for USPTO-induced errors, smaller firms and solo practitioners may not.

A February 28, 2024 survey of over 150 law firms and corporations indicated 50% of the responders generally planned to avoid submitting applications in DOCX format. It is difficult to place a cost on DOCX-induced processing delays, including unnecessary notice of omitted parts, examination delays, lengthy petition decision delays and possible reductions in PTA. These early results reinforce the idea that avoiding the entire DOCX road trip by paying $400 toll to file patent applications via the legacy PDF process makes more sense than trying to navigate through the madness and risking these DOCX-induced headaches.

USPTO Responds

USPTO Commissioner for Patents Vaishali Udupa sent the following statement to IPWatchdog in response to a summary of the claims made in this article:

We are experiencing historically high percentages of eligible filings in DOCX format, and we are so thankful to practitioners who have worked with us since the beginning to provide feedback, share concerns and suggestions, and make this transition a success. Since the January 17 transition date, 90 percent of eligible filings in Patent Center have been in the DOCX format. Additionally, the auxiliary pdf option has been a successful way for stakeholders to have enhanced confidence in their filings as we continue to build trust in filing in the DOCX format.

Having said that, we know change is never easy, and there will always be bumps in the road in any transition. We are always listening. We encourage all practitioners to report any and every issue they experience to our Electronic Business Center so that we can quickly address and resolve it. We also welcome stakeholders to join us at our DOCX training sessions and visit our Patent Center page for useful tips and information. By working together, we can drive further progress and ensure all patent applicants have the best experience possible. 

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14 comments so far. Add my comment.

  • [Avatar for Don Baker]
    Don Baker
    June 5, 2024 12:58 pm

    Since I wrote my last comment, I got an email from [email protected]. I had sent them a sample page from the NPPA I’ve been reviewing and correcting with a GIF equation on it. They said: “However, our system did process and render the page 22 docx document your provided with the equations without an issue.”, and sent their DOCX conversion. When it opened in Mac Pages, I got two errors: “Mathtype equations in unsupported formats were converted to images” and “Form components aren’t supported and are removed”. It then spanned more than one page, dividing a table across the page break. LibreOffice 7.4.7.2 opened it almost correctly, with the table on just one page, and the top line bold where the Pages top table line was not.
    Apparently GIF files will work.
    -until they don’t.

  • [Avatar for Don Baker]
    Don Baker
    June 5, 2024 12:40 pm

    I’ve been reviewing and correcting a DOC-format NPPA filed about three years ago, then using Word 2002 on a Win7 PC with MathType4 for the equations. Now I’ve switched to a 2023 M2 Mac mini, using Word 2021 for DOCX format, and Codeweaver’s CrossOver to get equations from MathType4.
    It’s painful.
    None of the word processing packages that will work on this Mac and produce DOCX format, all “recommended” by USPTO, see the old OLE Word 2002 equations and math symbols in text the same. Furthermore, Mac Pages doesn’t even reproduce the USPTO application template paragraph numbers the same, using periods after numbers, instead of square brackets around them. MS Word 2021 will randomly alter the paragraph indents over large spans of the document, something over which I have no control. After reading that USPTO can mangle DOCX equations, and that IP legal firms have recommended using images for equations, I tried to find out from USPTO if it will accept the GIF equation images that I can get from MathType4.
    No such luck.
    I emailed the Director, the EBC and eMod, whatever that is, and got referred to call the Inventor’s Assistance Center, where the nice gentleman said to call the EBC. There, I got an Agent who clearly didn’t know what a GIF file is, and kept referring me to the USPTO documents referring to use of DOCX. I can convert GIF files to JPG or PNG, but I can’t get anyone at the USPTO to tell me which is acceptable, much less what minimum DPI resolution they require. I’m going to use 600.
    This is a real Circle-J operation.
    The USPTO did not perform due diligence in making sure that standard tools to meet its requirements are actually available to customers, and that it is processing them correctly, as the article above clearly indicates. It did not make sure that the EBC and others are prepared to answer detailed questions on format. In previous patent applications where I made mistakes, the USPTO had a habit of bombarding me with pages of legal references when it could have simply stated what format error it wanted corrected, and how, in three sentences or less.
    The dysfunctional culture at USPTO clearly needs some Congressional oversight.

  • [Avatar for Julie Burke]
    Julie Burke
    March 21, 2024 12:13 pm

    USPTO Commissioner for Patents Udupa, while I appreciate your earnestness and your offer to always listen, IP practitioners affected by the USPTO’s IT system challenges are waiting and struggling.

    When will the USPTO answer Carl Oppedahl’s letter to OPLA asking about how IP practitioners can rely upon the auxiliary DOCX?

    When will all those long-ago reported IT bugs be fixed?

    Why is the USPTO maintaining inconsistent petition practices? Why are petitions to expunge an inadvertently filed auxiliary PDF dismissed by the Office of Petitions, (H, I, J) but granted by a Tech Center Group Director (K)?

    Why is a petition dismissed “as inappropriate” as though it were filed under 1.182, when it was filed under 1.181? Why does that petition decision not acknowledge and address applicant’s request to have applicant’s PDF maintained in the permanent record? (G)

    Why is the fee for filing a DOCX-related petition under 1.182 waived in some cases and pocketed in others?

    Why is an applicant subject to $8300 for excess claim fees when it was USPTO-induced DOCX errors that created all those additional claims? (A).

    Why is the average petition times running 167 days with some taking as long as 353 days when the Office has the ability to decide these petitions in 5 days, see (O2)?

    To be clear, the DOCX rollout has shredded goodwill and shattered trust between USPTO and the IP community.

    Lastly, the DOCX problems will likely disproportionately affect under represented users of the patent system, who generally lack access to legal assistance and funds to navigate the USPTO’s IT systems to file their applications and correct the USPTO’s DOCX-induced errors.

  • [Avatar for Pro Say]
    Pro Say
    March 20, 2024 07:01 pm

    Thank you Julie and Michael for this explosive indictment of DOCX.

    To my fellow independent and small company inventors:

    Do not — repeat DO NOT — file or permit your patent attorney or agent to file your application via DOCX.

    File only with good old fashion, trustworthy physical paper. ONLY.

    Just chock up the PTO’s paper-filing penalty to the cost of doing business (you’re already paying a reduced fee as a result of being a small or micro entity).

  • [Avatar for KenF]
    KenF
    March 20, 2024 06:21 pm

    I always find it ironic that the repository of technological advancement can’t get its own technological act together at all….

  • [Avatar for Julie Burke]
    Julie Burke
    March 20, 2024 05:59 pm

    We found one common feature, or bug, associated with submitting the spec, claims and figures either in a single document or in separate documents via DOCX process.

    Petition Decisions A-E all arose from seemingly innocuous line breaks, paragraph breaks or page breaks being inserted via DOCX conversion process. This minor format-type change had negative impact on applicants. For example, when claim text spilling over into the Abstract page, the Abstract is not accepted, since it must be filed on its own page, and a final portion of the original claim language lost from the claim set.

    Even when the spec, claims and figures are filed as separate documents, DOCX-errors can create problems.

    A blank page can appear in a specification, which the USPTO flags as missing page.

    Or line breaks become paragraph breaks in a claim set. The DOCX rendering machine recognizes these claim fragments as new claims, providing each a new claim number. The USPTO then follows suit and charges for each excess dependent and independent claim.

    Features that appear to save time in the short term may create problems that take up more time to correct later on down the road.

    And while these glitches may seem rare, they do happen, when they happen, as we document above, they can turn into big headaches.

  • [Avatar for anon]
    anon
    March 20, 2024 04:05 pm

    To file using DOCX, it previously required that you split up the word document into the specification (less claims and abstract), Claims, and Abstract. Now you can file it whole and it can be automatically split up into its component parts. They are trying to make time saving features.

  • [Avatar for Mike Cicero]
    Mike Cicero
    March 20, 2024 12:58 pm

    In my earlier post, I meant to also extend my thanks to Mr. Spector for this article. I appreciate both his and Dr. Burke’s efforts.

  • [Avatar for Patent Administrator]
    Patent Administrator
    March 20, 2024 12:36 pm

    Did Commissioner Udupa define what is meant by “eligible filings” in this statement?

    “Since the January 17 transition date, 90 percent of eligible filings in Patent Center have been in the DOCX format.”

    I find it very hard to believe that 90% of all nonprovisional applications filed under 35 USC 111 since January 17 have been filed in DOCX format.

  • [Avatar for Mike Cicero]
    Mike Cicero
    March 20, 2024 11:13 am

    Highly insightful article, Dr. Burke. Thank you for looking into these issues and for expressing your findings with such clarity.

  • [Avatar for Anonymous]
    Anonymous
    March 20, 2024 10:46 am

    @Yenrab,

    Interesting thought. However, not having had one screwed up myself, I don’t know how the screwups typically come to light and I wonder whether the features (used in the purest sense of the word) of the DOCX system that cause the problems in one case will invariably cause the same problems in the other case.

    (This almost makes me long for the days when we filed by paper/mail…..)

  • [Avatar for Yenrab]
    Yenrab
    March 20, 2024 10:17 am

    One possible tactic to avoid being penalized for a PTO screw-up of the DOCX components, is t o file the same patent application twice on the same day. The second one is a back up (so it gets submitted without paying a filing fee). They in the first one is okay, you just let the backup case go abandoned. If the first one is screwed up, but the second one is fine, you pay the late fee for that and abandon the first.

    I discovered this by accidentally double filing the same application for unrelated reasons. Apparently there is no penalty for doing this unless you try to prosecute both.

    Fortunately, I haven’t had a patent application bungled yet by the PTO, but if they start doing that, I am ready.

  • [Avatar for KenF]
    KenF
    March 20, 2024 09:49 am

    The refusal to grant $8300 refund b/c of the “blanket” authorization to charge dep acct for required fees is THE definition of insult to injury.

  • [Avatar for John Adams]
    John Adams
    March 20, 2024 07:35 am

    No issues, many filed in the last 2 years or whenever they started.

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