A you are all aware, the USPTO has begun requiring applications (and preliminary amendments) to be filed in .docx format. The USPTO has also allowed patentees to file auxilliary pdfs of the uploaded docx files. What is less clear is what happens when the USPTO processes the .docx after filing and introduces an error?
Our firm recently had a situation where the auxilliary pdf and the originally uploaded .docx file were correct, but post-filing processing by the USPTO generated an error and that triggered a Notice to Correct Application Papers.
Unbillable time was spent trying to correct the Office's error. But, ultimately there was no movement by the USPTO. While multi-section DOCX processing is available for utility non-provisional initial filings (specification, claims, abstract and drawings in one single document), following this interaction and after a protracted and unsatisfying result, our firm now files Abstract, Claims, and Specification for our cases as separate .docx files. We continue to file drawings as PDF. While this practice introduces some additional administrative work, it avoids the need to expend effort to attempt to get the USPTO to correct an error.
I hope by sharing this rather simple .docx practice tip it will mitigate this type of issue for your firm. Have you run into any similar issues with .dcox processing? Have you got another minor practice tip that you care to share?
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