[Patentpractice] Preliminary Amendments in Docx?

Thu Feb 22 15:55:42 EST 2024

This is the USPTO's explanation from the link:
37 CFR 1.16(u) applies to applications not filed in DOCX. In accordance with 37 CFR 1.115(a), a preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application. Thus, if a preliminary amendment is filed on the same day as the application, the amendment must be in DOCX format to avoid the surcharge. A preliminary amendment filed after the filing date of the application will not incur the surcharge because it is not part of the original disclosure of the application and thus is not required to be in DOCX format.

A preliminary amendment to the specification, claims, and/or abstract cannot be filed in DOCX format as part of the initial submission of a new application. If you want to submit a preliminary amendment that is considered part of the original disclosure of the application (37 CFR 1.115(a)) and avoid the non-DOCX surcharge, you should file the preliminary amendment in DOCX format on the same day, as a follow-on submission in the application.
My understanding is: (1) a preliminary amendment filed on the same day as the application must be in DOCX format or you will need to pay the non-DOCX fee, (2) it is not possible to file a preliminary amendment in DOCX format with the initial application, and (3) to file a preliminary amendment on the same day as the application, the application must be filed first, and then the preliminary amendment can be filed with any sections of the spec, claims, and abstract in DOCX format.

Thanks to those who identified this issue. It's a bit of trap for the unwary.

Scott Nielson

801-660-4400

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Catherine Van Houten via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, February 22, 2024 1:44 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Catherine Van Houten <catherine.vanhouten at mcneillbaur.com>
Subject: Re: [Patentpractice] Preliminary Amendments in Docx?

We haven’t seen this in any of our cases, but when searching for an answer to a different DocX question and found this is on Ideascale.

https://uspto-emod.ideascalegov.com/c/idea/69920?utm_source=notifciation&utm_medium=email&utm_campaign=761&utm_term=digest-v2&utm_content=c108.m80222.rgov.w61

Catherine A. Van Houten | she/her/hers

Director of Intellectual Property Administration

McNeill Baur PLLC

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Hill, Jason via Patentpractice
Sent: Thursday, February 22, 2024 2:32 PM
To: patentpractice at oppedahl-lists.com
Cc: Hill, Jason <jhill at harnessip.com>
Subject: [Patentpractice] Preliminary Amendments in Docx?

Out of curiosity has anyone else received a Notice to file Missing Parts regarding a non-DOCX fee as it relates to a preliminary amendment that was filed in pdf format along with the original submission? Does anyone know where in the docx regulations where it states that any preliminary amendment filed along with the original submission must be in docx format? Below is a snip of the NTFMP that we received and to be clear the specification as filed was uploaded as docx.

[cid:image001.png at 01DA65A5.A29DC9F0]

We have received a couple of these and the only place we can find any information about it is in a FAQ here: File patent application documents in DOCX | USPTO<https://www.uspto.gov/patents/docx>

Thanks!

Jason L. Hill

Clerical Supervisor

O: 703-668-8083<tel:703-668-8083>

12950 Worldgate Dr. Suite 750
Herndon, VA 20170

[Harness Intellectual Property Law Since 1921]<https://linkprotect.cudasvc.com/url?a=https%3a%2f%2fwww.harnessip.com%2f&c=E,1,7hCPNbPX4Y-vedGjw_G6Ra3tRvf887cbsBemtTKQSqu3R-YfLgELEGN5GcHCyvAGXZyWEyIxrb7MpdmdqSOvGpXKNBVCrewOTAe9Om4R-YBF&typo=1>

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