Our previous announcement of November 24, 2021 noted that the U.S. Patent and Trademark Office (USPTO) delayed implementation of the non-DOCX filing surcharge until January 1, 2023. The USPTO has not announced whether there is a need to delay implementation beyond January 1, 2023.
In view of the above, as January 1, 2023, approaches, a USPTO surcharge fee of $400 (large entity), $200 (small entity) and $100 (micro entity) will apply for non-DOCX filings. The surcharge fee applies to non-provisional applications filed under 35 U.S.C. §111, including Paris Convention and non-convention applications. The fee will apply to divisionals, continuations, continuations-in-part, and PCT bypass-continuations. (e.g., the specification, claims, and abstract must be in DOCX format to avoid the surcharge; drawings are not subject to this requirement). The DOCX surcharge does not apply to US National Stage Applications, Provisional Patent applications, Design Patent applications or PCT International Applications filed in the US Receiving Office.
Drawings may be filed as PDF or DOCX documents. There is no surcharge for drawings not filed as DOCX documents.
DOCX is a structured text-based Microsoft Word document (versions Word 2007 and later), which replaces the “DOC” format.
In view of the above, to avoid the USPTO surcharge, we recommend that you commence sending specifications in DOCX format for all utility non-provisional applications filed on or after January 1, 2023.
We will keep you posted of any further updates about the USPTO DOCX as they become available.