(190) Suspension of Expedited Examination of Design Patent Applications
Suspension: Pursuant to 37 CFR 1.183, the United States Patent and
Trademark Office (USPTO) is sua sponte suspending expedited examination of
design applications under 37 CFR 1.155 effective April 17, 2025 (the
"effective date"), which is three days after this notice was signed. The
USPTO has seen a significant increase in the number of requests for
expedited examination of design applications under 37 CFR 1.155, and this
increased workload is negatively impacting the pendency of all design
applications.
In addition, the USPTO has seen a significant increase in applications
by inventors claiming micro entity status under 37 CFR 1.29 for design
patent applications. The increase in micro entity filings has been
accompanied by a significant increase in the number of erroneous micro
entity certifications filed by inventors who do not qualify for micro
entity status. The problem is particularly pervasive among design
applications undergoing expedited examination under 37 CFR 1.155. The heavy
use of the expedited examination procedure by applicants filing erroneous
micro entity certifications leads to longer wait times for all applicants
seeking design patents, including legitimate micro entity applicants. It
also means the loss of fee revenue for the USPTO due to the improper
payment of fees at the reduced amount (currently an 80% reduction for micro
entities for most patent-related fees).
Suspension of the expedited examination procedure for design
applications will support the USPTO's efforts to reduce the pendency of
unexamined design applications, which will benefit all design patent
applicants. The suspension will also facilitate the USPTO's efforts to
address the problem of erroneous micro entity certifications, as well as
the USPTO's broader efforts to mitigate and protect against threats to the
intellectual property system. Therefore, in its discretion, the USPTO has
determined that an extraordinary situation exists, and justice requires the
suspension of expedited examination of design applications under
37 CFR 1.155.
Discussion: 37 CFR 1.155 provides an expedited examination procedure for
design applications provided the application is in condition for
examination and includes a complete request meeting the requirements of
37 CFR 1.155 (including the fee specified at 37 CFR 1.17(k)). Under this
procedure, such applications are examined with priority and undergo
expedited processing through the entire course of prosecution in the USPTO
(referred to as "rocket docket filings"). Rocket docket filings account for
a significant portion of available design examining resources.
For the first few years following the introduction of expedited
examination of design applications under 37 CFR 1.155, requests for
expedited examination of a design application were less than 1% of total
design application filings. In recent years, requests for expedited
examination of design applications have increased by 560%, and this
increased workload is negatively impacting the pendency of all design
applications. The pendency for regular design applications is growing
faster than the pendency for applications undergoing expedited examination
under 37 CFR 1.155. In fiscal year 2024, close to 20% of design
applications were applications undergoing expedited examination under
37 CFR 1.155. Furthermore, because examiners are given additional examining
time for applications undergoing expedited examination under 37 CFR 1.155,
suspension of the expedited examination procedure for design applications
would result in a savings of roughly 36,000 examination hours per year.
Therefore, suspension of the expedited examination procedure for design
applications will permit the USPTO to reallocate these hours to the
examination of the inventory of unexamined design applications and help
reduce pendency for all design applicants.
The USPTO has also seen a significant increase in applications from
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US PATENT AND TRADEMARK OFFICE |
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inventors claiming micro entity status for design patent applications. For
example, from fiscal year 2019 to fiscal year 2024, applications for design
patents filed with micro entity certifications increased by 170%, and that
percentage continues to rise. In addition, applications undergoing
expedited examination under 37 CFR 1.155 with micro entity certifications
increased by over 1,400% during that same period.
While an increase in micro entity filings alone is not problematic, this
recent rise has also been accompanied by a significant increase in the
number of erroneous micro entity certifications filed by inventors who do
not qualify as micro entities. Many of the erroneous micro entity
certifications are from applicants that have been named on more than four
previously filed applications and/or patents and, therefore, do not qualify
for micro entity status. These erroneous micro entity certifications, and
the heavy use of the expedited examination procedure under 37 CFR 1.155 by
these applicants, have led to longer wait times for all applicants seeking
design patents, including legitimate micro entity applicants. Additionally,
these erroneous micro entity certifications result in the USPTO not
collecting the proper fees (i.e., small entity or undiscounted fees). To
address these erroneous micro entity certifications, the USPTO has been
mailing fee deficiency notices in affected applications; however, the
volume of rocket docket filings continues to grow. Suspension of the
expedited examination procedure for design applications will support the
USPTO's efforts to reduce the pendency of unexamined design applications,
which will benefit all design patent applicants. The suspension of the
expedited examination procedure for design applications will also
facilitate the USPTO's efforts to address the problem of erroneous micro
entity certifications, as well as the USPTO's broader efforts to mitigate
and protect against threats to the intellectual property system.
Although expedited examination of design applications under 37 CFR 1.155
will be suspended, design patent applicants still have the ability to
advance the examination of a design application in certain limited
circumstances. Specifically, under 37 CFR 1.102(c)(1), a petition to make
an application special may be filed without a fee where the basis of the
petition is the applicant's age or health. See Manual of Patent Examining
Procedure (9th Edition, Rev. 01.2024, November 2024) 708.02, subsections I
and II.
The USPTO plans to undertake rulemaking to remove the provisions of
37 CFR 1.155 and 37 CFR 1.17(k). Any request for expedited examination of a
design application filed on or after the effective date will not be
granted. The phrase "any request" encompasses initial and renewed requests.
Accordingly, a renewed request filed on or after the effective date will
not be granted, irrespective of the filing date and time of the initial
request and whether the USPTO's dismissal of the initial request afforded
the applicant an opportunity to submit a renewed request to rectify the
deficiency. The USPTO will sua sponte refund the fee under 37 CFR 1.17(k)
associated with any request filed on or after the effective date of this
notice.
The USPTO will remove form PTO/SB/27, titled "REQUEST FOR EXPEDITED
EXAMINATION OF A DESIGN APPLICATION (37 CFR 1.155)," from the USPTO's
website and decommission the corresponding document code-ROCKET-in Patent
Center. Applicants should not submit stored copies of form PTO/SB/27 on or
after the effective date.
Contact Information: Inquiries concerning requests for expedited
examination under 37 CFR 1.155 filed prior to the effective date may be
directed to Christian McLean, Supervisory Patent Examiner, Art Unit 2923,
at 571-270-1996. Inquiries concerning this notice may be directed to
Erin Harriman, Senior Legal Advisor, Office of Patent Legal Administration,
at 571-272-7747.
April 14, 2025 COKE MORGAN STEWART
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and Trademark Office
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