A new year brings new intellectual property laws and regulations, and 2023 is no exception.

Among the most pressing issues:

  • The DOCX format filing requirements for new U.S. utility applications are delayed, but are still being implemented.
  • USPTO small entity/micro patent fees are being reduced.
  • Unitary Patents in Europe are finally coming into effect.

Here is what you need to know:

DOCX Format Filing

The USPTO has delayed its new requirements to file in DOCX format. The office announced in August changes to its utility patent filing process. The changes included a fee that was supposed to be incurred starting January 1, 2023 for utility patent filings not filed in DOCX format. On December 29, 2022, the USPTO delayed implementation of the new fees until April 3, 2023 in order to provide applicants more time to adjust to filing patent applications in this format. Although the USPTO is still strongly encouraging applicants to file in the new format, Fox continues to advise paying the surcharge for applications containing non-standard text, such as mathematical equations or chemical formulae. These applications may experience discrepancies in the rendering when DOCX submissions are converted by the USPTO for publication.

U.S. Patent Fees

The USPTO implemented a new fee schedule starting December 29, 2022. Under the Unleashing American Innovators Act of 2022, small entity discounts increased from 50 to 60 percent, and micro entity discounts increased from 75 to 80 percent. Effective January 1, 2023, WIPO also made changes for select fees associated with PCT filings. With respect to any fee change, please remember that the fee for issuance is that amount appearing on the Notice of Allowance and Fees Due letter (form PROL-85). All other fees are based on the amount due according to the fee schedule in effect on the day the fee is paid in full.

Unitary Patents in Europe

In Europe, the Unified Patent Court (UPC) and European patent with Unitary effect (Unitary Patent or UP) came into existence this new year. The European Patent Office (EPO) allowed requests to delay grant of patents starting January 1, 2023, so applicants can seek unitary effect. Therefore, applicants who have received the notice of allowance and have not yet approved the text for grant may request delay of issuance of the decision to grant. As of January 1, 2023, applicants also can file early requests for unitary effect to be acted on once a patent is granted to minimize the chance of missing the short time frame for requesting unitary effect. Finally, the Unified Patent Court is expected to open June 1, 2023, with a sunrise period starting March 1, 2023 to opt out of the UPC jurisdiction. Given the approvals needed for opting out, Fox recommends deciding whether to opt out and to make preparations as soon as possible.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.