Expedited Examination of a Design Patent Application

April 12, 2010 – Blog Post

The average time to obtain a US Design Patent under regular examination is about 15 months from filing to issue. This pendency is short relative to Utility Patent Applications, which require on average over 35 months of examination before issuing. However, some companies need Design Patent protection even faster. For example, when an competitor is about to launch a similar product on the market, or when investors are demanding patent protection before further funding, or when the product is typically in vogue with consumers for only a short period of time, companies need a Design Patent as soon as possible. In such situations, they can request the USPTO to examine their design patent applications under an expedited procedure provided under 37 CFR 1.155. Under the expedited procedure, also known as the “Rocket Docket,” a design application issues on average within 5 months!

This expedited procedure is available upon request to any design applicant who complies with certain requirements, as discussed next.

Fees: A fee of $900 must be paid for expedited examination, in addition to the basic design application filing fee of $220.

Search: The applicant must file a statement indicating that a preexamination search was conducted. Importantly, a search made by a foreign patent office satisfies this requirement. The statement must also include a list of the field of search such as by U.S. Class and Subclass. The application must also include an information disclosure statement listing the results of the preliminary examination search.

Drawings: The design application must include drawings in compliance with USPTO regulations. If the drawings fail to comply with USPTO requirements, the USPTO will send a notice requiring compliance within a shortened time period. Unless all requirements are timely met, the application will await action in its regular turn. It is thus recommended to ask a US draftsman to review the drawings prior to filing so as to avoid unnecessary delays.

Election without Traverse: If the application includes two or more embodiments that are patentably distinct, the Examiner will require an election of one of the embodiments. The applicant must make the election without traverse. Otherwise, the application will await action in its regular turn. Divisional applications directed to nonelected embodiments will be examined under regular examination unless the divisional applications meet the above requirements for expedited examination.

No withdrawal: Once the USPTO grants a request for expedited examination, there is no provision for withdrawing from the expedited examination procedure.