[Pct] DOCX penalty applies to 371 cases? (was What is the status of the attempt to stop the DOCX surcharge?)

[Carl Oppedahl]

(Migrating to the PCT listserv)

The USPTO has made no secret that it plans eventually to mission-creep 
DOCX into every facet of US patent practice.  This will include all 
preliminary amendments to claims or other application parts, and to all 
responses to Office Actions.

But yes as of right now, there will be no $400 DOCX penalty imposed for 
a 371 entry in which the controlling application document is a PDF.

Keep in mind that well over half of all PCT applications are published 
in English.  For an entry into the US national phase from such a PCT, 
there is no need for the filer to upload /*any */PDF application into 
the USPTO system.  The application comes directly from the IB.  So there 
would not be any $400 penalty imposed on the filer, because what 
triggers the penalty is /*the filer */uploading a PDF.  In a 371 case, 
the controlling document is a PDF but the filer is not to blame for it.  
It was the USPTO (not the filer) who went off to the IB and obtained the 
PDF-format patent application.

But yes, in the special case where the PCT application was published in 
a non-English tongue, the US 371 filer does need to hand in a 
translation into English.  And if you do it in PDF, you will not incur 
the $400 penalty.  For now.  Down the line, I expect the USPTO will 
eventually mission-creep the DOCX penalty into such a filing.

On 1/4/2024 1:24 PM, Goldberg, Judi via Patentpractice wrote:
>
> Could someone clarify if the DOCX requirement (and penalty) also apply 
> to US national phase applications filed Jan 17^th and after?The USPTO 
> text says “111(a) application”, so maybe not.
>
> Thanks,
>
> Judi
>
> cid:image001.jpg at 01D52DCA.ACA5FA20
>
> 	
>
> Judith L. Goldberg | Patent Paralegal
>
> *Leydig, Voit & Mayer, Ltd. *
>
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>
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> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On 
> Behalf Of *Carl Oppedahl via Patentpractice
> *Sent:* Thursday, January 4, 2024 2:14 PM
> *To:* Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* [Patentpractice] What is the status of the attempt to stop 
> the DOCX surcharge?
>
> *[External Email]*
>
> (Migrating this discussion to Patent Practice listserv.)
>
> I am aware of one listserv member who had been trying to work up a 
> line of attack.  I'd guess that some listserv members are by now 
> fatigued with all of the time and energy that had been expended trying 
> to get the USPTO to see sense about the shutdown of EFS-Web and PAIR, 
> and to try to get the USPTO to pay attention to the Patent Center bug 
> list and feature request list, and that had been spent in the past 
> trying to get the USPTO to see sense about DOCX.  Not to mention the 
> trademark listserv members who have tried to get the USPTO to see 
> sense about the USPTO's insistence on forcing applicants to reveal 
> where they sleep at night.
>
> I for one am fatigued almost beyond description.  It is so 
> discouraging how stubborn the USPTO decisionmakers are and how 
> unwilling they are to engage in anything that remotely resembles 
> two-way open dialogue.
>
> On 1/4/2024 9:43 AM, Randall Svihla via Patentcenter wrote:
>
>     The DOCX surcharge is supposed to go into effect on January 17,
>     2024.What is the status of the attempt to stop it?
>
>     Best regards,
>
>     Randall S. Svihla
>
>     NSIP Law
>
>     Washington, D.C.
>
>
>
>
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