“Rocket docket” for US designs

In this blog article I will introduce the reader to a USPTO initiative for US design patent applications called “rocket docket”.  (The formal name for this initiative is “exepedited examination for designs”.)  Using this initiative, a successful applicant might get a case allowed in less than a month.  What are the pros and cons of using rocket docket?

By way of background, with current backlogs it might take anywhere from ten months to two years for a newly filed US design patent application that is not on the rocket docket to reach the desk of an Examiner.  Part of the explanation for the size of this backlog for non-rocket-docket cases is that the design examiners at the USPTO are told to prioritize such applications after any applications that are on the rocket docket.

As I say, for a case on the design rocket docket, it is commonplace for an Examiner to allow the application in less than a month after the case lands on the Examiner’s desk.  The applicant that pays an Issue Fee promptly after receiving the Notice of Allowance is likely to receive a granted US design patent a mere four months or so after having filed the design patent application.

The alert reader will thus wonder, why would any applicant pass up a chance to be on the rocket docket?  This blog article discusses possible pros and cons of the rocket docket.

The formal name for “rocket docket” for designs is Expedited Examination of Design Applications and you can read about it here in MPEP § 1504.30.  To get onto the rocket docket, you must satisfy several conditions.

Application complete.  The first requirement for eligibility for the rocket docket is that the filer must not have made any mistakes in the application filing, not forgotten any fees or documents, and not have screwed up the drawings in any way.  Everything about the application must be complete and ready for examination.

The applicant that is accustomed to proceeding in piecemeal fashion, for example handing in the inventor’s declaration late and cleaning up sloppy application papers after receiving a Notice of Missing Parts or some other notice, will find that it is not necessarily an easy matter to consistently carry out a design filing that is complete on filing day and in which no mistakes or omissions have occurred.

Instant IDS.  Normally one satisfies the Duty of Disclosure (the duty to disclose any relevant prior art known to the applicant) by handing in an Information Disclosure Statement (“IDS”) perhaps many months after having filed the application.  An IDS will, after all, be considered timely if filed at any time prior to the first Office Action, and in a non-rocket-docket case it will very likely be anywhere from six to twenty-four months before the case even reaches the desk of an Examiner.  But if you are going to put a case onto the rocket docket, you need to hand in such an IDS instantly, since the case might get allowed within just a few weeks of the filing of the design patent application.

So one of the first potential cons of rocket docket is that the applicant must do all of the work of preparing that IDS essentially instantly.  This requires making inquiry to the inventors, to the (perhaps corporate) applicant, to foreign counsel if involved, and to US patent counsel.  The inquiry requires any of those persons to identify not only known US and foreign patents, but public uses and non-patent literature (“NPL”).  This may include the need to memorialize and document the applicant’s own prior sales and public uses of the applicant’s own products.  For rocket docket, all of this must be carried out at the time of filing of the US design patent application.

Pre-examination search.  The rocket docket procedure requires that the applicant carry out a pre-examination search.  The results of the pre-examination search must also be disclosed in an IDS (in addition to the above-mentioned disclosure of known prior art). 

The filer is obligated to sign a formal statement that the pre-examination search was carried out, stating the field of search such as in terms of US patent classes and subclasses.  The search is required to have covered US patent documents, non-US patent documents, and NPLs.

Who is going to sign this statement?  Presumably the signer needs to be someone with personal knowledge of the thoroughness of the search.  It is safe to assume that if the resulting US design patent were ever litigated, the adversary would seek to depose the signer of this statement and would second-guess the thoroughness of the search that was carried out, as well as the completeness of the resulting IDS that was filed in the US design patent application as part of the rocket docket process.

The USPTO helpfully explains that one way to satisfy this pre-examination search requirement would be to proffer the results of a search of a counterpart design application in a foreign patent office.  This sounds attractive since TYFNIL, any real or imagined deficiencies in the thoroughness of that pre-examination search could be blamed on that foreign patent office.  It is, however, unlikely that an applicant could actually make use of this approach, because:

• Most foreign offices that handle design applications do not carry out any search, but merely “register” the design.
• The priority period for designs under Article 4 of the Paris Convention is a mere six months.  Thus, even if a particular foreign office were among the relatively few that do carry out a search for a design application, one cannot be sure that the search would be completed in good time for use in filing “rocket docket” papers in the US design application.  

Fees.  To get onto the rocket docket, the applicant must pay an extra government fee.  This nearly doubles the amount of government fees that need to be paid to get the design application filed in the USPTO.  For example, for a large entity, the usual fees to get a US design patent application filed add up to $960.  For a rocket docket filing, an additional $900 fee must also be paid to the USPTO.

For small or micro entities the various fees are cut in half or in half again.  But regardless of the percentage of the fee reduction, the total fees to get a rocket docket case filed are still almost double the total fees to get a non-rocket-docket case filed.

Summary.  To get onto the rocket docket, you must carry out a pre-examination search, and someone somewhere will have to sign a statement as to the field of the search.  The signer will surely be deposed if and when the resulting design patent is litigated.  The application has to be complete and ready for examination on the day that it is filed, with drawings that are of examination and publication quality in the application on filing day.  Nothing (no documents, no fees) can have been forgotten or omitted in that filing.  And the fees paid upon filing will be almost doubled.

Many US design patents have been granted on rocket docket applications.  Many design applicants, especially high-volume corporate filers, make regular use of the design rocket docket.