[Federal Register Volume 86, Number 104 (Wednesday, June 2, 2021)]
[Notices]
[Pages 29571-29572]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-11256]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2021-0010]
Submitting Patent Applications in Structured Text Format and
Reliance on the Text Version as the Source or Evidentiary Copy
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is in
the process of transitioning to a system that supports submitting new
patent applications in structured text, specifically DOCX format.
Filing in structured text allows applicants to submit their
specifications, claims, and abstracts in text-based format, thereby
eliminating the need for applicants to convert applications into a PDF
for filing. It also provides a flexible format with no template
constraints and improves data quality by supporting original formats
for chemical formulas, mathematical equations, and tables. The USPTO
previously stated that for applications filed in DOCX, the
authoritative document would be the accompanying PDF that the USPTO
systems generate from the DOCX document. In response to public
feedback, however, the USPTO now considers the DOCX document filed by
the applicant to be the authoritative document. Accordingly, an
applicant who files or has filed an application in DOCX may rely on
that version as the source or evidentiary copy of the application to
make any corrections to the documents in the application file. The
USPTO will be hosting DOCX training sessions to provide more
information, demonstrate how to file and retrieve DOCX files in Patent
Center, EFS-Web, and PAIR, and answer any questions. Applicants can
also file test submissions through Patent Center training mode to
practice filing in DOCX. In addition, we will be offering listening
sessions to gather feedback and suggestions to further improve DOCX
features.
DATES: Effective date: June 2, 2021.
FOR FURTHER INFORMATION CONTACT: Mark O. Polutta, Senior Legal Advisor,
571-272-7709, or Eugenia A. Jones, Senior Legal Advisor, 571-272-7727,
of the Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patents.
For technical questions related to submitting documents in DOCX
format, please contact the Patent Electronic Business Center (EBC) at
1-866-217-9197 (toll-free), 571-272-4100 (local), or [email protected]. The
EBC is open from 6 a.m. to midnight, ET, Monday through Friday.
SUPPLEMENTARY INFORMATION: The USPTO is in the process of transitioning
to a system that supports submitting new patent applications in
structured text, specifically DOCX format. Application documents
submitted in DOCX format will facilitate the examination and
publication processes. This notice provides information on structured
text filing. Specifically, the USPTO now considers the DOCX documents
filed by applicants to be the authoritative document, otherwise
referred to as the source or evidentiary copy of the application, for
purposes of determining the content of the application as originally
filed, should a discrepancy be discovered. This notice does not require
patent applicants to make any changes to their practices.
Currently, applicants may electronically file an application either
by submitting PDF files or by submitting DOCX files. If an applicant
submits DOCX files, the USPTO uses the DOCX files to generate PDF files
prior to the actual filing of the application. The USPTO published a
final rule on setting and adjusting patent fees on August 3, 2020. See
Setting and Adjusting Patent Fees During Fiscal Year 2020, 85 FR 46932
(Aug. 3, 2020). In addition to establishing a fee for applications not
submitted in a DOCX format, the response to comment 54 in the final
rule stated that for applications filed in DOCX, the authoritative
document will be the accompanying PDF that the USPTO systems generate
from the DOCX document. See id. at 46957.
In response to public feedback, the USPTO has changed what will be
the authoritative document. The USPTO is informing applicants that it
now considers the DOCX documents filed by applicants to be the
authoritative document, otherwise referred to as the source or
evidentiary copy of the application. This change applies to all patent
documents submitted in DOCX format, including DOCX submissions made
prior to this notice.
The source or evidentiary copy of the application is the version
submitted to the USPTO by the applicant in one of the following
formats: Paper, DOCX, or PDF when not accompanied by a DOCX version of
the same. Applicants should not submit PDF versions they created when
filing an application in DOCX, as they are unnecessary. If the
applicant submits documents in DOCX along with PDF versions they
created (not the auto-generated PDFs created by the USPTO), then the
DOCX version will still be considered the source or evidentiary copy,
and the applicant will be required to pay the non-DOCX surcharge fee.
Applicants can rely on the DOCX version as the source or
evidentiary copy in order to make any corrections to the record when
any discrepancies are identified between the source or evidentiary copy
and the documents as converted by the USPTO. Accordingly, during the
filing process, applicants will be advised to review the DOCX files
before submission rather than reviewing the USPTO-generated PDF
version, as set forth in the August 3, 2020, final rule.
However, applicants are advised to check the USPTO-generated
versions as soon as practicable for any discrepancies or errors. Any
discrepancies or errors that occur as a result of filing an application
in DOCX format should be promptly brought to the attention of the
USPTO. Applicants should initially contact the Patent EBC for
investigation at 1-866-217-9197 (toll-free), 571-272-4100 (local), or
[email protected]. Depending on the situation, applicants may need to file
a petition under 37 CFR 1.181 in order to have the issue reviewed and
addressed. This is consistent with current USPTO procedures for
documents filed in patent applications.
In this regard, the USPTO has a records retention schedule for
documents it receives, including new patent applications and
correspondence filed in patent applications. For example, applications
filed in paper via mail or hand-delivery are scanned into the image
file wrapper (IFW) or the Supplemental Complex Repository for Examiners
(SCORE), as appropriate. In 2011, the USPTO established a one-year
retention policy for patent-related papers scanned into the IFW or
SCORE. See Establishment of a One-Year Retention Period for Patent-
Related Papers That Have Been Scanned Into the
[[Page 29572]]
Image File Wrapper System or the Supplemental Complex Repository for
Examiners, 77 FR 3745 (Jan. 25, 2012). After the expiration of the one-
year period, the USPTO disposes of the paper unless the applicant,
patent owner, or reexamination party timely files a bona fide request
to correct the electronic record of the paper in IFW or SCORE. DOCX
submissions will be treated similarly. Therefore, the procedure to
correct any discrepancies or errors that occur as a result of filing an
application in DOCX format will align with the established procedure
for an applicant, patent owner, or reexamination party to request
corrections to the electronic record when there is an error caused by
the USPTO in scanning papers into the IFW.
Applicants should promptly review the electronic record of an
application and file any request to correct the electronic record based
on the source or evidentiary copy as soon as possible after the
document has been submitted to the USPTO. Applicants should not expect
to have a request to correct the electronic record granted if the
request is based on the source or evidentiary copy and it is filed more
than one year after submission of the document. Documents submitted by
applicants in PDF or DOCX in patent applications will be treated in a
similar manner to papers that have been scanned into the IFW in that
they may be disposed of after a period of time if they are the source
or evidentiary copy.
The USPTO's procedures regarding national security classified
documents are unaffected by this notice. National security classified
documents must be filed in the USPTO in paper format via hand-delivery
to Licensing and Review or by mail in compliance with 37 CFR 5.1(a) and
Executive Order 13526 of December 29, 2009, or in electronic format via
the Department of Defense Secret internet Protocol Router Network
(SIPRNET). See section 115 of the Manual of Patent Examining Procedure
(MPEP, Ninth Edition, Revision 10.2019). National security classified
documents filed electronically via SIPRNET are maintained at the USPTO
in paper form; an electronic record of such documents is not
maintained. Thus, all national security classified documents filed with
the USPTO are maintained only in paper form, and the paper copies of
these documents are the source or evidentiary copies.
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2021-11256 Filed 6-1-21; 8:45 am]
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