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1504.30 Expedited Examination [R-5] - 1500 Design Patents
1504.30 Expedited Examination [R-5]
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;
(2) The applicant must have conducted a preexamination search; and
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k); and
(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.
37 CFR 1.155 establishes an expedited procedure for design applications. This expedited procedure became effective on September 8, 2000 and is available to all 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.
A design application may qualify for expedited examination provided the following requirements are met:
(A) A request for expedited examination is filed (Form PTO/SB/27 may be used);
(B) The design application is complete and it 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);
(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 include a list of 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<) 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 Board of Patent Appeals and Interferences. All processing is expedited from the date the request is granted.
Design applicants seeking expedited examination may file a design application in the Office together with a corresponding request under 37 CFR 1.155 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 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
Mail Stop Expedited Design should only be used for the initial filing of design applications accompanied by a corresponding request for expedited examination under 37 CFR 1.155. Mail Stop Expedited Design should NOT be used for a request under 37 CFR 1.155 filed subsequent to the filing of the corresponding design application. Instead, a subsequently filed request under 37 CFR 1.155 should be made by facsimile transmission to the centralized facsimile number *>571-273-8300< with the notation "SPECIAL PROCEDURES SUBMISSION" included at the top of the first page and the corresponding application number identified.
Design application filings addressed to Mail Stop Expedited Design will be forwarded immediately to the Design TC Director's office. Whether an application requesting expedited examination is hand-delivered to the **>Customer Service Window< or mailed to Mail Stop Expedited Design, expedited processing is initiated at the Design TC Director's office provided the application (including the design application filing fee) 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 Design TC Director to grant the request for expedited examination, the fees are immediately processed, the application papers are promptly assigned an application number, and the application is dispatched to an examiner for expedited examination. In addition, the applicant is notified that examination is being expedited. The 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, it is recommended that the request and the corresponding design application be filed together in order to optimize expeditious processing.
If an application requesting expedited examination is incomplete (not in condition for examination), an appropriate notice will be mailed to the applicant identifying the reasons why the application is incomplete and requiring correction thereof. The Office will not examine an application that is not in condition for examination even if the applicant files a request for expedited examination.
If an application requesting expedited examination fails to comply with one or more of the requirements for expedited examination under 37 CFR 1.155, but the application is otherwise complete, the applicant will be promptly notified and required to comply with all requirements under 37 CFR 1.155 within a shortened time period extendable under 37 CFR 1.136(a). Unless all requirements under 37 CFR 1.155 are timely met, the application will await action in its regular turn.
Once a request under 37 CFR 1.155 is granted, examiners will expedite examination by examining the application out-of-turn. Examiners are strongly encouraged to use telephone interviews to resolve minor problems. Clerical processing of the application will be expedited as well.
If the overall appearance of two or more patentably distinct embodiments of an article as disclosed in the drawings are different in appearance or scope, restriction will be required in accordance with MPEP § 1504.05. If applicant refuses to make an election without traverse, the application will not be further examined at that time, and the application will await action in its regular turn. Divisional applications directed to nonelected inventions will not qualify for expedited examination unless the divisional application meets on its own all requirements for expedited examination under 37 CFR 1.155. Similarly, expedited status will not carry over to a continuing application, including a CPA, unless the continuing application meets on its own all requirements for expedited examination under 37 CFR 1.155.
Once a request for expedited examination is granted, prosecution will proceed according to the procedure under 37 CFR 1.155. There is no provision for "withdrawal" from expedited examination procedure.
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