Notice of USPTO Filing Surcharge in 2023
As you may know, starting April 3, 2023, the United States Patent and Trademark Office (USPTO) will begin assessing a new surcharge for all nonprovisional utility applications filed under 35 U.S.C. § 111, including continuing applications, where the specification, claims, or abstract are not filed in DOCX format. The surcharge is $400 for large entities and $200 for small entities.
DOCX is a word processing file format that the USPTO believes provides advantages and is part of its efforts to modernize and streamline patent application systems. However, our internal testing has shown that filing in the DOCX format has a risk of errors. Also, filing in this format increases costs, as it requires additional review to confirm an application was captured accurately and completely and this accurate and complete application is reflected in the USPTO patent application system. Thus, Wolf Greenfield is generally not promoting filing in the DOCX format at this time due to the increased risk and associated cost, which we believe outweigh the surcharge required.
We note that there will be instances where an application filing in the DOCX format is required by the USPTO and cannot be avoided. An application filed in the DOCX format is currently required for certain USPTO Pilot Programs (e.g., the Climate Change Mitigation Pilot Program and the Cancer Moonshot Expedited Examination Pilot Program). Rest assured we have the ability to handle filings in such instances and have put in place procedures for the necessary review for completeness and accuracy and to correct any errors, if needed. However, please be aware that additional time will be needed for such filings to allow for the needed review and correction of any errors.
Going forward, we will continue to evaluate and test the DOCX system for filings and will file in this new format on a limited basis. We will adjust our recommendation and procedures, as appropriate. If you have any questions or concerns, please reach out to us to discuss.