USPTO notice clarifying the requirement for the non-DOCX surcharge

On January 17, 2024, the fee for filing a nonprovisional utility patent application under 35 U.S.C. 111 that is not in DOCX format took effect. This notice is being published to clarify that an applicant who files a preliminary amendment to the specification, claims, and/or abstract on the filing date of the application MUST submit the preliminary amendment as a follow-on submission in DOCX format in order to avoid incurring the non-DOCX surcharge fee set forth in 37 CFR 1.16(u). 

The USPTO is aware of some confusion from the information that was made publicly available on the USPTO website or was presented in DOCX training sessions. To the extent the information suggested or indicated preliminary amendments can be filed in PDF format and be included in the initial filing without incurring the non-DOCX surcharge, that information is incorrect.

Under certain conditions set forth in this notice, an applicant who relied on confusing or incorrect information from the USPTO and filed a preliminary amendment to the specification, claims, and/or abstract in PDF format on the filing date of an application where the application was otherwise filed in DOCX format, and who received a notice requiring the non-DOCX surcharge but has not yet paid that surcharge, may file a petition under 37 CFR 1.183 requesting a waiver of the outstanding non-DOCX surcharge.

For more information you can find the full Official Gazette Notice along with USPTO points of contact for any additional questions on our website.