Expedited Examination for Design Patent Applications in the USPTO
By Jeffrey Kuo
Programs such as Track One Prioritized Examination are well known for expedited examination of patent applications. However, Track One is only available for utility and plant applications and does not apply to design applications.1
The “Rocket Docket” is a program under 37 C.F.R. § 1.155 that authorizes expedited examination for design applications in the U.S. Patent and Trademark Office.2
Design applications are generally speedy compared to utility applications. The average time for design applications from filing to issuance is 19.3 months with a first Office Action pendency of 13 months
. However, an applicant may need a faster turnaround for design protection where “marketplace conditions are such that new designs on articles are typically in vogue for limited periods of time.”3
For example, designs in the fashion industry can go in and out of style within the usual first Office Action pendency of 13 months, and as such, design patents may not be very useful. Additionally, other consumer products might have a short shelf life, often a year or less. Under the Rocket Docket, the average first Office Action pendency is 3.8 months, less than a third of the time if the design application was filed without expedited examination
The requirements for expedited examination for design applications are:
- A request for expedited examination is filed (Form PTO/SB/27 should be used);
- The design application is complete and includes drawings in compliance with 37 CFR 1.84 (see 37 CFR 1.154 and MPEP § 1503 concerning the requirements for a complete design application), or is an international design application designating the United States that was published pursuant to Hague Agreement Article 10(3);
- A statement is filed indicating that a pre-examination search was conducted (a search made by a foreign patent office satisfies this requirement). The statement must also indicate the field of search such as by U.S. Class and Subclass (including domestic patent documents, foreign patent documents and non-patent literature);
- An information disclosure statement in compliance with 37 CFR 1.98 is filed;
- The basic design application filing fee set forth in 37 CFR 1.16(b), if applicable, is paid; and
- The fee for expedited examination set forth in 37 CFR 1.17(k) is paid.4
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1. See MPEP 708.02(b).
2. MPEP 1504.30.
3. MPEP 1504.30.
4. $900 for large entity; $450 for small entity; and $225 for micro entity. 37 C.F.R. § 1.17(k); MPEP 1504.30.