[Patentpractice] DOCX penalty fee question

Dan Feigelson djf at iliplaw.com
Wed Feb 28 17:30:28 EST 2024


I think the issue with the preliminary amendment was that is was filed on
the same day as the application, and therefore was considered part of the
original filing. As far as I know, amendments filed after the day of filing
do not trigger the penalty.

Dan

On Thu, Feb 29, 2024 at 12:17 AM Goldberg, Judi via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Does the DOCX requirement/$400 penalty apply to *any* spec amendments,
> such as filing a replacement spec?  I saw the email discussions here that
> the penalty fee was assessed for a preliminary amendment, so I’m wondering
> if we will also get hit with the penalty if we have to file a substitute
> spec?  Does it make a difference if the amendments are in a national
> phase application rather than a utility application, like it is for the
> initial filing (Or will they also assess the penalty fee if we file a
> preliminary amendment?  Hmmmm).
>
>
>
> PS – I took several of the USPTO’s DOCX “training” sessions, and they
> never mentioned having to pay the penalty for anything other than the
> originally filed spec.  Why am I not surprised. L
>
>
>
> Thanks in advance,
>
> Judi
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