Mission Scrubbed – USPTO Grounds “Rocket Docket”

This action, taken under to 37 CFR 1.183, is meant to address the significant increase in expedited examination requests, including those erroneously claiming micro entity certifications, which has contributed to increased pendency and resource constraints within the office.

Mission Statement - Background and Rationale

The expedited examination procedure for design applications, introduced under 37 CFR 1.155, was scarcely used at its inception, accounting for less than 1% of design filings. However, recent years have seen an explosion in popularity, including a 560% in such requests and nearly 20% of design applications in fiscal year 2024 seeking expedited review. This surge placed considerable strain on examining resources, resulted in longer wait times for all design patent applicants, and contributed to a growing backlog of unexamined applications.

Compounding these challenges, the USPTO tallied a 170% increase in design patent applications filed with micro entity certifications between fiscal years 2019 and 2024, and a soaring 1,400% increase in expedited applications with such certifications. Many of these certifications were found to be erroneous, often submitted by applicants who failed to meet the eligibility criteria for micro entity status. Improper certifications of micro entity status resulted in fee deficiencies and further exacerbated pendency issues for all applicants, including legitimate micro entity applicants.

Downrange Effects

As a result of suspending the expedited examination process the USPTO claims it will:

• Reallocate approximately 36,000 annual examination hours to address the backlog of unexamined design applications.

• Reduce overall pendency for all design patent applicants.

• Address the erroneous micro entity certification problem and associated fee deficiencies.

• Support broader efforts to safeguard the integrity of the intellectual property ecosystem.

As of the effective date, the USPTO no longer grants initial or renewed requests for expedited examination under 37 CFR 1.155 and any associated fees paid on or after the effective date will be refunded. The USPTO has also removed the relevant request form (PTO/SB/27) and decommissioned the corresponding document code in its patent center.

Alternative Launch Sites for Expedited Review

While the expedited examination process under 37 CFR 1.155 has been suspended, applicants may still seek to accelerate the examination of a design application in limited circumstances. Specifically, an applicant may file a petition to make an application special without a fee under 37 CFR 1.102(c)(1) based on the applicant’s age or health.

Subsequent Stages

The USPTO indicated its intention to pursue rulemaking to formally remove the provisions for expedited examination under 37 CFR 1.155 and associated fees under 37 CFR 1.17(k). The USPTO advised applicants not to submit requests for expedited examination or use stored copies of the now-obsolete request form after the effective date.

Mission Debrief

Suspending the expedited examination process for design patent applications reflects the USPTO’s efforts to effectively manage its limited resources, address erroneous claiming of micro entity status, and improve the efficiency and integrity of the design patent examination process. Applicants should consult with their attorneys and review their filing strategies in light of these changes and, when appropriate, consider alternative options for advancing examination.