Justin Isaac and Raul Tamayo

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Justin Isaac and Raul Tamayo
Office of the Chief Administrative Officer
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria VA 22313-1450
Re:

0651–0089 comment on 91 Fed. Reg. 22526 (Apr 27, 2026) request for comment
on DOCX Submission Requirements

Dear Mr. Isaac and Mr. Tamayo:
The USPTO’s DOCX filing software does not work reliably, and because of inherent
properties of DOCX, cannot possibly ever work reliably. The USPTO should rescind the
$430 fee for non-DOCX filing. That is, users should be permitted to file in whatever fulltext form their word processors reliably outputs, DOCX or PDF/A, with no surcharge.
On May 13-15, my firm attempted to file an application in DOCX format. The DOCX
had been generated by Libre Office, rather than Microsoft Word. The Patent Office’s
DOCX filing software refused to accept it, failing in exactly the way many of us have
been predicting for years.1 After several frustrated attempts to file an application, and
several calls to the Electronic Business Center, one EBC agent advised “just use
Microsoft Word.” An EBC supervisor stated, and I quote “I can’t answer yes or no as to
whether the USPTO supports Libre Office for filing patent applications.”
During rulemaking, as a commitment prerequisite to implementing the DOCX rule, the
USPTO represented, multiple times, that “DOCX is supported by many popular wordprocessing applications, such as Microsoft Word, Google Docs, Pages, and LibreOffice.”2
The USPTO is now reneging on a commitment it made. If the USPTO cannot keep its
commitments, and apparently does not even suggest to its supervisory employees that
they are subject to those commitments, the DOCX surcharge should be rescinded.
The Office now admits that it built its regulations and application filing software around a
single-source proprietary software vendor — without ever explaining why that departure
from OMB's voluntary-consensus-standards policy under the National Technology
Transfer and Advancement Act (Pub. L. 104-113 § 12(d), codified as note to 15 U.S.C. §
272), and OMB Circular A-119 was justified. I urge that the § 1.16(u) non-DOCX
surcharge be rescinded, so that those of us who do not use Microsoft Word can submit
our patent applications in PDF or PDF/A (A for “archival,” ISO 19005, the subset of full
PDF that ensures that a PDF is entirely self-contained, with no features that could depend
on some external computer or data) with no surcharge.

1

Past letters drawing these failures to the Office’s attention are at
https://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=202309-0651-002
2

Setting and Adjusting Patent Fees During Fiscal Year 2020, Response to Comments 46, 51,
54, 61, 85 FR 46932, 46956-58 (Aug. 3, 2020),

My firm and I use Libre Office as our word processor of choice. In my office with
several lawyers and assistants, we do not have a single copy of Microsoft Word installed.
As many letter-writers have warned repeatedly, DOCX is not a “voluntary consensus
standard,” and therefore is not within OMB Circular A-119, and is discouraged by
Secretary Lutnick under 15 U.S.C. § 272(b)(3). It is a standard driven by a single vendor
—Microsoft—and even Microsoft does not honor it.3 Because the Patent and Trademark
Office departed from OMB guidance on “voluntary consensus standards” to endorse a
single-vendor proprietary standard, those of us who use non-Microsoft authoring tools
cannot reliably generate patent application files that are accepted by the USPTO for
filing.

Background
Of course it makes sense for any government agency or patent office to ask its applicants
to hand in their filings in a computer-readable way (in a way that contains computerreadable characters rather than mere bitmap images of characters). All U.S. Government
agencies and courts—except one—do that by requiring filing in PDF/A, that is, an ISOstandardized subset of PDF that has all characters, paragraph breaks, and similarly
semantically-relevant formatting locked in and easily read by downstream software. But
the Patent Office goofed—instead, it does two things, both remarkably
counterproductive: (a) it accepts a PDF, but immediately “flattens” it to a low-resolution
bitmap, throwing away the precise and machine-readable characters that applicants
provide, and (b) it accepts DOCX, a format that is not uniform and reproducible across
all versions of Word, let alone across computers and software of other vendors.
Nonetheless, 37 C.F.R. § 1.16(u) says that an applicant must hand in a patent application
in “DOCX format” or pay a $430 penalty for failing to do so.
Yes there are at least two supposed standards for what supposedly counts as a DOCX file,
but both leave far too many behaviors “implementation defined,” and both allow
extensions. Because of that range of behavior that is not guaranteed to be uniform,
neither standard purports to be an “interoperability” standard (unlike PDF and PDF/A,
both of which do.) Microsoft itself does not make any real attempt to conform to the
standard; instead it provides an extensive (and growing) list of ways in which Microsoft
Word does not conform to the standard. The various word processor makers that are not
Microsoft do their best to try to export into variants of DOCX that look similar to the
variant of DOCX that Microsoft Word generates, but given the lack of any clear standard
for “what counts as DOCX”, this is not an achievable goal.
The upshot is that the USPTO’s present patent e-filing system for filing in “DOCX
standard format” only works if the applicant chooses to purchase and use the most up-todate Microsoft Word software to create the DOCX file.

3

https://learn.microsoft.com/en-us/openspecs/office_standards/ms-docx/b839fe1f-e1ca-4fa68c26-5954d0abbccd

Detailed facts4
This all came to a head on May 13, 2026, when I did a first test filing of a patent
application that had a filing deadline of May 15, 2026.
Patent Center puked on my DOCX file. Patent Center said (falsely) that my DOCX file
“contains fonts that are not recognized by the system”.
I phoned up the USPTO’s Electronic Business Center, reaching a particular agent whom I
will call “Agent AL”. I was given a trouble ticket number of 2-01001251. At the request
of Agent AL, I emailed a copy of the DOCX file to Agent AL. Agent AL, who I believe
was genuinely trying to be helpful, immediately started telling me where to click in my
word processor to make the DOCX file into a kind of DOCX file that would work in
Patent Center. By this I mean a DOCX file that would permit me to avoid paying the
$430 penalty.
Agent AL’s first instructions were to do a “Save As”. I said I was looking at my word
processor and could not see any “Save As”. I asked what word processor Agent AL was
using, and the agent named some particular Microsoft product. I explained that in my
firm we don’t use Microsoft word processors, we use Libre Office. Agent AL was
unable to tell me how to get my word processor to generate a DOCX file that Patent
Center would not puke on.
I then followed the next few would-be workarounds that Agent AL asked me to try. Do a
“select all” and pick a single known-to-be-USPTO-acceptable font and save the file using
only that font. Which I did, using Times New Roman. Nope, Patent Center puked on the
resulting DOCX file. At the request of Agent AL, I repeated the “select all” and forced
the entire document to be Arial font. Again, Patent Center puked on the resulting DOCX
file.
Agent AL then asked me to copy the entire file and past it into Notepad. (This eliminates
nearly all formatting in almost any computer file.) And then Agent AL asked me to copy
from Notepad into a new empty document in my word processor, which I did. And then I
did what was required to restore some of the most basic formatting, such as the section
headings for “claims” and “abstract”. And I exported the file into DOCX. Again, Patent
Center puked on it.
Agent AL promised to escalate this defect in the Patent Center system to “the developers”
and promised to get back to me well in advance of May 15.
By noon on May 14, I had not yet heard back from Agent AL. So I called the EBC again,
reaching an agent that I will call “Agent JA”. We discussed the problem and his
conclusion was:
The only other thing I can recommend is just use [Microsoft] Word.

4

This is an excerpt from two more-detailed, and same-day contemporaneous accounts, that I
posted on my blog at https://blog.oppedahl.com/usptos-non-docx-surcharge-rears-its-uglyhead-again/

So what was previously unspoken is what got spoken today — the USPTO only supports
patent applications prepared using Microsoft Word.
Agent JA also referred to some unpublished document in which he sees that Patent
Center supports different fonts depending on whether the word processing being used is
Libre Office or Microsoft Word. He said that the Times New Roman used in Libre
Office is different from the Times New Roman used in Microsoft Word. I asked him
where this is documented publicly, and he was not able to say where this is documented
publicly.
I then escalated to an EBC supervisor. After a long period on hold, I was speaking with a
supervisor whom I’ll call “RO”. I asked her whether she concurs in the advice of Agent
JA to “just use Microsoft Word”. RO said, and I quote:
I can’t answer yes or no as to whether the USPTO supports Libre Office
for filing patent applications.
Supervisor RO said she would try to communicate to the DOCX developers to urge them
to get back to me about this Patent Center defect.
When my deadline arrived on May 15, I was just barely able to e-file using DOCX, but
with no confidence that the USPTO will render it correctly in some months when the
USPTO publishes the application, and with no confidence that the USPTO will render it
correctly in some years when the USPTO issues the patent.

Another instance
When I posted this story in my blog, a reader responded by explaining an
anecdote similar to mine:
I am at least happy to hear that I am not alone – while this problem has
occurred only once for us, I had an application that I ultimately could not
file as DOCX – after 12 tries to reformat, copy to notepad according to the
method you described, replace all fonts and then replace them again,
extract the pages of the document that allegedly had the problem and
reformat them, etc. None of it worked and I saved every one of the files
that the office generated to show me my errant font. I suspect we will fail
but since I filed without fees my response to the [missing parts] notice will
detail my two hour odyssey in an attempt to secure a waiver of the fee – of
course with an authorization to charge the fee if the request is not granted.

Conclusions
DOCX does not work reliably for filing patent applications.5 PDF does. The surcharge
for filing in PDF should be rescinded. If the PTO wants to retain DOCX as an optional
filing vehicle for those that choose to use it, I have no objection. But the DOCX penalty
is unwarranted burden.
This entire fiasco arose because the PTO evaded multiple procedural requirements of
multiple laws. These procedural requirements exist to ensure that an agency informs
itself of all adverse consequences of a regulation, and takes them into account to mitigate
them. The PTO evaded each of these requirements, through false claims of exemption,
false claims of having complied in the past, by simply skipping them, or by lying:


The PTO violated OMB Circular A-119 by deprecating PDF and PDF/A,
“voluntary consensus standard” that commit to interoperability, and instead
choosing DOCX, which is not a “voluntary consensus standard” and not subject
to interoperability commitments.



As time has progressed, the PTO has placed more and more emphasis on the
“auxiliary PDF,” that is a PDF copy of the DOCX filing. That is, to correct for
the deficiencies of DOCX filing, the PTO puts greater reliance on “duplicative
information” 5 C.F.R. § 1320.5(d)(1)(ii).

5

A recent article at IPWatchdog, https://ipwatchdog.com/2024/03/11/mastering-uspto-docxformats-ultimate-guide noted the risk, and stated that the following new steps should be
mandatory:








Follow the USPTO guidelines when you prepare your application in DOCX
format to avoid errors during the filing process.
Save the feedback document that Patent Center creates when you submit your
application. This document may serve as evidence in case of any litigation related
to misuse.
Submit a supplementary PDF along with the DOCX filing by 17th January
2024, unless the PTO extends the deadline.
Review your submission a month or two after filing and before the 1-year filing
deadline expires to fix any issues that you may have overlooked initially.
File your documents early, so that you and your staff or attorneys can examine
the feedback report and take the necessary actions.
Compare the documents to ensure no unintentional changes are there. Mark this
is a mandatory step. You must compare the User-submitted DOCX to the
USPTO-generated DOCX; the User-submitted DOCX to the USPTO-generated
PDF; a User-submitted PDF to the USPTO-generated DOCX; and the Usersubmitted PDF to the USPTO-generated PDF.

All of these extra saves, extra error checks, and the like are extra burden that have been
raised in multiple past letters, and are not booked in the PTO’s April 2026 estimates.



The PTO has never explained how DOC+PDF filing has any benefit to the public
over PDF filing alone (or PDF/A filing alone). The entire DOCX rule is entirely
regulation in agency self-interest.



The PTO has consistently misparaphrased public comments in order to answer
them directly, entirely simply skipped public comments, or simply lied (see the
bullets below). As of June 2026, the PTO has never “Conducted the review
required in § 1320.8” and “Evaluated the public comments received under
§ 1320.8(d) and § 1320.11” as required by § 1320.5(a)(1)(i) and § 1320.5(a)(1)(ii)
because the PTO has evaded them.



This ICR contains no “evaluation of the continued need for such collection,” 5
C.F.R. § 1320.8(a)(1)—agency need is satisfied by PDF collection. This ICR
identifies no “need for the information and proposed use of the information,”
§ 1320.5(a)(1)(iv)(B)(3), to compare mandatory DOCX filing against pre-2020
PDF filing, or against PDF/A filing, The DOCX rule is regulation in agency selfinterest, with no benefit to the public.



The ICR gives no explanation that “the proposed collection of information: (i) Is
the least burdensome necessary for the proper performance of the agency's
functions to comply with legal requirements and achieve program objectives”
§ 1320.5(d)(1)(i). The public explained in several letters6 that PDF/A collection is
less burdensome; the PTO has never offered any explanation to the contrary.



This ICR contains no “evaluation of whether (and if so, to what extent) the burden
on respondents can be reduced by use of” PDF/A collection, rather than DOCX.
§ 1320.8(a)(5).



The PTO’s guidance for DOCX filing has dozens of mandatory requirements that
are stricter than regulation—fonts, disallowed features of Microsoft Word, etc.
The PTO’s guidance violates President Trumps Executive Order 13892 § 3.
Disallowing features of Microsoft Word is inconsistent with the PTO’s
representation that the PTO made that it would accept “the DOCX standard.”7



The PTO violated the Administrative Procedure Act several times over by either
hiding or misstating facts, and this pattern of evasion implies that the factual
underpinnings for the PTO’s Paperwork Reduction Act filings were similarly
flawed. For example, in my comment letters, I gave an example of an attempted
DOCX filing that gave clearly erroneous results.8 In the Final Rule, the PTO
claimed “To date, the Office has not received notifications of any issues resulting
from the filing of applications in DOCX format.”9 That was a lie.

6

See letters of Boundy, Oppedahl, Cretsinger, Lake, Feigelson, Neifeld.

7

Responses to comments 51, 59, 85 Fed. Reg. 46957-58.

8

https://www.uspto.gov/sites/default/files/documents/Comment_Carl_Oppedahl_081219.pdf



For another example, in the 2020 final rule, the PTO refers to a “yearlong study”
four times. The PTO never made that “yearlong study” available during the
notice-and-comment period, itself unlawful. Further, the PTO’s representation of
the conclusion of the “yearlong study” is simply a lie. In the Final Rule notice,
the PTO wrote:10

The conclusion of the “yearlong study” is 180° opposite the representation in the
Federal Register—the study concluded that PDF is “the right approach.”

The PTO’s characterization of the “yearlong study” was a lie.


In the Final Rule Notice, the PTO claimed “The collection of information
involved in this Final Rule have been reviewed and previously approved by the
OMB…”11 That was a lie. No such clearance had even been filed, let alone
approved. Because the PTO claimed to not need to, the PTO skipped all the
procedural steps required by 5 C.F.R. § 1320.8 and .11. The PTO has never
performed them all in arrears.

The USPTO has demonstrated repeatedly over five years that it either technologically
cannot, or will not, implement DOCX filing with the reliability necessary for patent
application filing. Likewise, the USPTO has demonstrated repeatedly over five years that
it is willfully institutionally committed to violating the procedural law that would have
prevented this fiasco. The ICR should be approved to the extent of permitting DOCX

9

85 Fed. Reg. 46956, col. 2

10

Responses to Comments 51, 56, 65, 67, 85 Fed. Reg. at 46957-59.

11

85 Fed. Reg. 46985, col. 2.

filing for those that choose to, but refused for 37 C.F.R. 1.16(u), the rule that penalizes
non-DOCX filing.
Respectfully submitted,
/s/
Carl Oppedahl
Oppedahl Patent Law Firm LLC