Saturday, April 26, 2014

Expediting Examination of U.S. Design Patent Applications - Capturing the Value at the Front of the Patent Term

Applicants are seeking U.S. design patents at record rates, but it is important to understand that design patents may be valuable for only a short time. I am not speaking of the 14-year design patent term, but the fact the world may initially "love" a design than view it as "out of date" just a few years later. For example, each new version of the iPhone somehow makes prior versions look out of date.

Thus, when the design relates to rapidly evolving technology, expediting examination may be important to quickly capture that commercial value and prevent infringement. Although the PTO examines design applications faster than utility applications, expediting examination of design applications may be worth it in certain cases.

Thus, 37 CFR  § 1.155(a), effective since September 8, 2000, established a procedure for applicants who conducted a preliminary examination search and request expedited examination along with the 37 CFR 1.17(k) fee:

(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;
(2) The applicant must have conducted a preexamination search;
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k);
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.

(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.

Another mundane patent procedure? Maybe, but it could increase the chance a design patent will be granted before the world moves on to something new!

Copyright © 2014 Robert Moll. All rights reserved.