USPTO to add surcharge on non-DOCX patent applications in 2023

If anything, generating a pdf from various input files/structured text has been a much harder task. We generated docx files to allow for easy modification by non-technical staff, but to generate a pdf we had to use a headless instance of libreoffice since pandoc was struggling with the rendering.

Having worked directly with their teams in the past (although not on this), a lot of their systems seemed to evolve naturally over time based on the needs present. In that industry, a large majority of the documents being passed back and forth are DOCX. So my semi-educated guess is someone built a system to handle some simple intake tasks for DOCX applications because a large majority already were, it evolved over a few years, and when they finally decided to fully automate the process, they decided to build upon what they have which only supported DOCX and it was cheaper/easier to mandate everyone submit in that format than to build a new system or add support for others.

  Is requiring the DOCX format just adding another step in the process for applicants?
  Actually, it's the opposite. The USPTO conducted a study and found that over 80% of applicants are authoring their applications in DOCX format (through writing tools such as Microsoft Word). Because the files are originally in a DOCX format, uploading the original file eliminates the step for the applicant to convert the document to PDF prior to submission. Instead, the applicant is able to save the step of converting because our system will do that automatically.

I encourage anyone who believes being a patent examiner is an easy job to read this subreddit: https://www.reddit.com/r/patentexaminer/

You can find patent examiners who say that being a patent examiner is relatively easy. These folks typically changed from a notoriously difficult job in law or academia. So it's only relatively easier. Beyond these cases, there do seem to be some examiners who have an easy time, but that's quite rare in my experience, and I'd question the quality of their work.

As for why I took the job: I came from academia, so the job is easier in some respects. The quota isn't entirely bad: It's hard to meet, yes, but it's also mostly objective. If an examiner's numbers are good, the USPTO is happy with them. That contrasts with my experience in academia, where one's job performance is often subjective. If a researcher's boss decides they don't like the researcher for whatever reason (office politics, the researcher is socially awkward, etc.), there might be nothing the researcher could do to recover from that. The job also does give me a lot of freedom in other ways: I can live mostly anywhere I want to, I'm not expected to work all the time (production numbers beat looking busy by working all the time), there are few IP restrictions (aside from that I can't get a US patent), etc. The main problems for me are that the quota is too high and that I don't care for the technology I'm assigned (though the technology could be a lot worse).

(It should go without saying that this comment is my own opinion and not that of the USPTO, US govt., my previous employers, etc.)

Note: I am a current USPTO patent examiner, and this is my opinion, not that of the USPTO or US govt.

The USPTO apparently has two contractors to classify patent documents. I've heard that some sort of AI system is used for classification, in combination with a lot of poorly paid contractors. In my experience, the classification is so frequently wrong that this is clearly not working. It might seem okay to upper management, who never has to actually deal with the classification being inaccurate. But examiners aren't happy with it.

Many people are calling for AI search. The new head of the USPTO mentioned it during a recent all-hands meeting. Unfortunately, the people who propose AI search don't seem to realize that 1. the USPTO has at least 5 AI search tools at their disposal (PLUS, More Like This, Dialog's similarity search, IP.com's similarity search, and Google Patents similar documents) and 2. none of these AI search tools work that well. In my experience, most of the time these tools don't return useful documents. (I still try them for every application as there's little downside.) The documents are usually close but it's rare that I'll actually use one of these documents in a prior art rejection. AI search sounds good to people who have never searched for patents and particularly have never used the existing AI search tools. AI search technology probably won't be good for a decade or more.

In contrast, tools to analyze patent claims for various problems (basically, linters) have been available for around 30 years and can be quite useful in my opinion. But the USPTO has no such tool available to examiners, and analysis under 112(b), etc., is almost always done manually. I wrote my own tool, which I run on my USPTO computer on a regular basis.

There are a huge number of opportunities to streamline USPTO operations with automation. Why are IDS forms not computer-readable? Why is so much information not auto-filled? Why do I have to fill out "bib data sheets" for every application? Why do I have to manually upload my search history when the system could easily automatically grab it for me? Etc.

And automation isn't enough. There should be more data validation in the process, as a lot of problems can be automatically caught at the time of filing or when I post an office action. That's when fixing these problems would be easiest.