37 CFR 1.155 Expedited examination of design applications.
- (a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination.
- (1) The application must include drawings in compliance with § 1.84, or for an international design application that designates the United States, must have been published pursuant to Hague Agreement Article 10(3);
- (2) The applicant must have conducted a preexamination search; and
- (3) The applicant must file a request for expedited examination including:
- (b) The Office will not examine an application that is not in condition for examination (e.g., missing basic filing fee) even if the applicant files a request for expedited examination under this section.
37 CFR 1.155 establishes an expedited procedure for design applications. This expedited procedure is available to design applicants who first conduct a preliminary examination search and file a request for expedited treatment accompanied by the fee specified in 37 CFR 1.17(k). This expedited treatment is intended to fulfill a particular need by affording rapid design patent protection that may be especially important where marketplace conditions are such that new designs on articles are typically in vogue for limited periods of time. The expedited procedure is available for international design applications designating the United States that have been published pursuant to Hague Agreement Article 10(3).
A design application may qualify for expedited examination provided the following requirements are met:
- (A) Expedited examination request is filed (Form PTO/SB/27 should be used);
- (B) 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);
- (C) A statement is filed indicating that a preexamination 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 nonpatent literature);
- (D) An information disclosure statement in compliance with 37 CFR 1.98 is filed;
- (E) The basic design application filing fee set forth in 37 CFR 1.16(b), if applicable, is paid; and
- (F) The fee for expedited examination set forth in 37 CFR 1.17(k) is paid.
EXPEDITED EXAMINATION PROCEDURE
Design applications requesting expedited examination and complying with the requirements of 37 CFR 1.155 are examined with priority and undergo expedited processing throughout the entire course of prosecution in the Office, including appeal, if any, to the Patent Trial and Appeal Board. All processing is expedited from the date the request is granted.
Design applicants seeking expedited examination may file a design application under 35 U.S.C. chapter 16 in the Office together with a corresponding request under 37 CFR 1.155 by EFS-Web, mail, or by hand-delivering the application papers and the request to the Customer Service Window located at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314. For applicants who choose to file a design application under 35 U.S.C. chapter 16 and the corresponding request under 37 CFR 1.155 via EFS-Web, the document description “Req for Expedited Processing, Design Rocket Docket” should be used to ensure efficient processing of the request. For applicants who choose to file a design application under 35 U.S.C. chapter 16 and the corresponding request under 37 CFR 1.155 by mail, the envelope should be addressed to:
Mail Stop Expedited Design
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.
A request under 37 CFR 1.155 may also be made for a previously filed design application. “Mail Stop Expedited Design” should also be used when filing a request for expedited examination under 37 CFR 1.155 by mail in a previously filed design application. A subsequently filed request under 37 CFR 1.155 may also be filed via EFS-Web. In such a case, the document description “Req for Expedited Processing, Design Rocket Docket” in EFS-Web should be used for the request to ensure efficient processing. In addition, a subsequently filed request under 37 CFR 1.155 may be filed by facsimile to the centralized facsimile number 571-273-8300.
To facilitate processing of a Request for Expedited Examination, the Office strongly encourages use of Form PTO/SB/27 available at www.uspto.gov/patent/patents-forms. If Form PTO/SB/27 is not used, then the notations “REQUEST FOR EXPEDITED EXAMINATION OF A DESIGN APPLICATION (37 CFR 1.155)” and “Doc Code: ROCKET” should be included at the top of the first page of the request, and for a subsequently filed request the corresponding application number should also be identified.
Requests for expedited examination under 37 CFR 1.155 are evaluated by the Director of Technology Center 2900. Expedited examination will be initiated provided the application is in condition for examination and a complete request under 37 CFR 1.155 (including the fee specified at 37 CFR 1.17(k)) qualifies the application for expedited examination.
Upon a decision by the Director of Technology Center 2900 to grant the request for expedited examination, the application is dispatched to an examiner for expedited examination. In addition, the applicant is notified that examination is being expedited. Expedited treatment under 37 CFR 1.155 occurs through initial examination processing and throughout the entire prosecution in the Office. Whereas, an application granted special status pursuant to a successful “petition to make special” under MPEP § 708.02 is prioritized while it is on the examiner’s docket so that the application will be examined out of turn responsive to each successive communication from the applicant requiring Office action. For a patentable design application, the expedited treatment under 37 CFR 1.155 would be a streamlined filing-to-issuance procedure. This procedure further expedites design application processing by decreasing clerical processing time as well as the time spent routing the application between processing steps.
Although a request under 37 CFR 1.155 may be filed subsequent to the filing of the design application under 35 U.S.C. chapter 16, it is recommended that the request and corresponding design application be filed together in order to optimize expeditious processing. Any request under 37 CFR 1.155 in an international design application designating the United States should be filed after publication of the international design application pursuant to Hague Agreement Article 10(3), as publication of the international design application is required in order to qualify for expedited examination. See 37 CFR 1.155(a)(1). Any request under 37 CFR 1.155 filed in an international design application will generally not be acted upon prior to publication of the application pursuant to Article 10(3). Applicants filing international design applications and seeking expedited examination in the United States may wish to consider requesting the immediate publication of the international design application after registration pursuant to Rule 17(1) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
The Office will not examine an application not in condition for examination even if the applicant files a request for expedited examination. See 37 CFR 1.155(b).
If the Office finds that a request for expedited examination fails to comply with one or more of the requirements under 37 CFR 1.155, but the application is otherwise complete, the applicant will be promptly notified of the deficiency. Applicant may submit a renewed request under 37 CFR 1.155 to rectify the deficiency. Unless all requirements under 37 CFR 1.155 are timely met, the application will await action in its regular turn.