The U.S. Patent and Trademark Office has extended the effective date of the $400 surcharge for new non-provisional utility patent applications where the specification, claims, and abstract are not filed in DOCX format to April 3, 2023. The surcharge will apply to all Paris Convention and non-convention applications filed under 35 U.S.C. 111(a), including divisional, continuation, continuation-in-part, and PCT bypass continuation applications. Other documents and submission types, including drawings, may still be filed in PDF format without incurring a surcharge.

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Patent applicants may inadvertently waive the attorney-client privilege during prosecution of their applications in the USPTO, as was decided in a recent U.S. district court case. The facts of the case serve as a reminder to exercise caution when explaining certain information to the USPTO.

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If you’ve been reading the legal news relating to U.S. patent litigation since April 2022, you are familiar with the dispute in progress in Delaware courtroom of U.S. Chief District Judge Colm Connolly regarding patent ownership and litigation funding disclosure requirements in patent infringement cases. The District of Delaware is perennially at or near the top of the list of venues for new patent infringement cases filed, particularly those cases filed by Non-Practicing Entities (NPE).

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