USPTO Announces Delay of Patent Filing Fee for Non-DOCX Applications

The United States Patent and Trademark Office (USPTO) issued a final rule to delay the effective date of the non-DOCX filing fee for an additional calendar year, until January 1, 2023. The fee adjustment would apply to any nonprovisional utility patent application filed under 35 U.S.C. 111, including any continuing application, that is not filed in DOCX format. The USPTO noted that this delay allows applicants additional time to adjust to filing patent applications in the new format and also enables the USPTO to conduct further testing of its systems.

Since the initial announcement of the proposed change, AIPLA has expressed concern about requiring patent applications to be filed exclusively in a DOCX format, outlining a number of concerns at each of opportunity to provide stakeholder feedback on the proposal. We are very appreciative of AIPLA’s cross-committee efforts headed by the Patent-Relations with the USPTO, Patent Law, Patent Agents, and Corporate Practice Committees, who identified this as a change that would potentially significantly impact AIPLA’s members. The Committees worked together to examine the proposals and provide feedback about the impact, and through the AIPLA Board, brought those concerns to the USPTO. In a series of efforts, AIPLA outlined concerns and suggested alternatives, including consideration filing a PDF in conjunction with a DOCX file without an additional fee, to remedy concerns with the new policy.

During the 2021 Annual Meeting, this potential delay was previewed during then-AIPLA President Joe Re’s Fireside Discussion with Andrew Hirshfeld who was Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO.  During the discussion, Mr. Hirshfeld noted that the Office still needed to engage a greater number of beta testers using the DOCX format to improve the process.