PPAC Highlights Design Patent Pendency:

Design Patent Pendency from filing to first Office action is down to 14.7 months (compared to 16.1 in FY21)

Overall pendency slightly up to 20.4 months (compared to 16.1 in FY21)

Expedited Examination is available but requires a search, significant fees and only cuts time to examination by half.

Objective 2.3 of the USPTO 2022-2026 Strategic Plan draft released January 6, 2023, is to "improve patent application pendency."

On November 1, 2022, the Patent Public Advisory Committee (PPAC) of the United States Patent and Trademark Office presented its fiscal year 2022 Annual Report to the President of the United States.

The PPAC was created by statute in the American Inventors Protection Act of 1999 to advise the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of the patent system, along with trademark corollary, TPAC. These Public Advisory Committees review the policies, goals, performance, budget, and user fees of the patent and trademark operations, respectively, and advise the director on these matters.

The letter accompanying the report notes significant progress on each of 3 key priorities:

(1) Improving the reliability and durability of the patent right;

(2) expanding the number of people who engage the U.S. patent system as inventors, particularly in under-represented constituencies and geographies; and

(3) being good financial stewards so the patent system is efficient, affordable and accessible.

The report notes that a reliable and durable patent right is timely, and encourages the USPTO to invest in the necessary resources to meet or exceed pendency goals, particularly in design patents.

Design patent pendency information is provided in real-time at the USPTO’s Design Patents Dashboard Data Visualization Center, shown upper right (currently reflecting 15.4 month average pendency to first action).

The USPTO is actively recruiting and training design patent examiners to manage pendency, aiming to hire upwards of 80 new design patent examiners each year, shown lower right. As of November 2022, there are 291 design examiners on staff.

Expedited Examination

For applicants in need of quicker design patent issuance, the USPTO offers a path for expedited examination of a design patent application, also known as the Rocket Docket under 37 C.F.R. §1.155. This ostensibly affords applicants rapid design patent protection that may be especially important to protect new product and user interface designs. All processing is expedited, including appeals, from the date the request is granted. The Request must state that a pre-examination search was conducted and provide the field of search, along with the results submitted in an Information Disclosure Statement (IDS). The current large entity fee for requesting expedited examination is $1,600, in addition to application filing, search and exam fees of $1,020.

Rocket Docket Pendency from of Grant of "Request for Expedited Examination" to first action averages 2.8 months (all FY 2022). The time from fling to grant currently runs 7.7 months, or about half that of normal applications.

Deferred Examination and Publication

The USPTO does not have an option to defer examination quite like some other countries which participate in the Hague System of International Design Registration. Design patent applications are typically unpublished until the application is allowed and the patent issues, therefore publication is ultimately controlled by payment of the issue fee. The USPTO does allow extensions of time to respond to various formal and informal matters which must be addressed before an application can be examined and allowed and requests for suspension of action for good cause, giving applicants further control over the timing of an application.

Substantive Examination

The USPTO examines design patent applications under 35 U.S.C. §171 and will scrutinize each application to ensure that the claim is directed to an ornamental design for an article of manufacture, that the drawings adequately illustrate the claimed design in accordance with the requirements of 35 U.S.C. §112, and that the claimed design is novel (not anticipated) and non-obvious.

Design Patent Term

The term of a U.S. design patent granted after May 13, 2015 is 15 years measured from the issue date. (Prior to May 13, 2015, design paten term was 14 years from issuance.)

For more information about design patent filing and prosecution, contact the author below:

George Raynal, Principal

george.raynal@designlawgroup.com

© 2022-2023 Saidman DesignLaw Group, LLC