Starting on January 17, 2024, non-provisional utility patent applications, with specification, claims and abstract in non DOCX filing formats, i.e., in PDF, will incur a surcharge of $400. An option for applicants to provide a backup PDF, or auxiliary PDF, version of their application with their DOCX version is available. There are no fees associated with providing the backup PDF. However, keep in mind the following issues:

The DOCX document that you upload (“D1”) will not control, because during the filing process the USPTO creates a different DOCX filed (“D2”) which will actually control. Therefore, if D1 and D2 are different, your patent will have errors which could no longer be corrected by requesting a certificate of correction, but can be corrected only by filing petition (which might or might not be granted).

The auxiliary PDF also will not control, therefore, filing it will not assure you that your patent will be free from USPTO errors.

What is the best way to proceed?

In my opinion (and in the opinion of many other practitioners) the best way to proceed is to continue to file all the applications in PDF format, paying the surcharge of $400. It would be much more expensive to correct a patent with error in chemical or mathematical formulas.

Of course this new USPTO surcharge is not applicable to National Stage Applications, which can still safely filed in PDF format.

Please contact me if you have any questions or if you wish to discuss this matter in more details.