Expediting Patent Examination with Rocket Docket using Prior-art Search – A Case Study

The USPTO or United States Patent and Trademark Office can take around 21 months to grant a design patent. Inventors can, however, use the USPTO’s accelerated program known as Rocket Docket to patent their inventions more quickly. The typical wait period for a first-design office action without the Rocket Docket is around 16 to 17 months. Expedited examination lessens the time it takes for an initial review from the grant date of the Rocket Docket request to around 2 months. Thus, an expedited design patent application saves approximately one year of waiting for the initial examiner evaluation.

This article will discuss a case study in which Sagacious IP’s professional prior-art search helped a client expedite the patent examination process and get the grant through Rocket Docket. It also discusses Rocket Docket, cost, requirements, and other details.

What is a Rocket Docket?

While the approval process for a design patent application can take almost two years, not all businesses can wait that long. Thus, the USPTO offers prioritized examinations for applicants who require grants faster. This prioritized examination service is known as Rocket Docket. It allows applicants to request an expedited review of their design patent application. Therefore, an applicant can have designs patented in under six months with the help of Rocket Docket. If the expedited review request is approved, the applicant’s patent application is prioritized over other design patent applications. It is recommended that the applicant file the design patent application and request for expedited examination together to expedite the process. Filing them separately may cause some delays.

Figure 1: Request Form for Expedited Examination of a Design Application (Source: USPTO)

How much does Rocket Docket Cost?

The USPTO charges $225 (subject to change) for micro-entities, $450 (subject to change) for small entities, and $900 (subject to change) for large entities to request expedited examination of a design patent application through Rocket Docket. The expedited examination fee is charged in addition to the standard filing fee.

The processing fee must accompany the request for an expedited examination. If an applicant does not pay the expedited examination fee, the patent office sends a notice of deficiency. If the applicant fails to respond, the application for a design patent is processed normally rather than expeditiously.

Requirements for Requesting Rocket Docketing

There are several requirements for seeking Rocket Docket expedited examination of a design application. These include:

  • Expedited examination request to the USPTO
  • Necessary filing fee for a design patent application
  • Additional fee for the expedited examination
  • An error-free design patent application
  • Black and white sketches of the design
  • A pre-examination search (Prior art Search)
  • A declaration that a pre-examination Prior-Art Search was carried out
  • Statement regarding the field of the search
  • Information disclosure statement must also be included

How long does Rocket Docket Take to Process an application?

It takes 4 to 6 months to approve design patent application through expedited examination. To expedite a design patent application using rocket docket, an applicant must conduct a Prior-Art Search to assist the patent office. The prior-art search must be thorough and complete. If the patent examiner suspects that the applicant has not conducted a thorough prior art search, he might reject the request for expedited review. So, it’s required to conduct a prior-art search for the design on which the applicant is trying to get a design patent.

Problem Overview

Sagacious IP recently received a request for a design patent search for a clothing item. The search was related to the pre-examination search required for expedited examination to get a design patent in the US. The client came to Sagacious IP to determine the best strategy for his design application.

Our Solution

We performed prior-art search on several popular subscription-based search platforms and an exhaustive non-patent literature (NPL) search on relevant NPL databases. For the comprehensiveness of the search, we used multiple types of search strategies:

  • Keywords-based Search: Byusing the right keywords
  • Classification-based Searching: By using the right classification
    • Most patent offices across the globe use Locarno classification.
    • Many countries like the USA, Canada, and Japan use national design classes.
  • Searching on multiple search databases.

After the prior-art search, we shared our findings with the applicant through:

  • Pre-Examination Search Document – The document provides support for the petition for accelerated examination, and the format of the document is acceptable by the USPTO.
  • Accelerated Examination Support Document – It is a supporting document that includes all the identified similar/nearly-identical and related documents.
  • Search Iterations – At times, USPTO comes out with the request for further search to be performed by the applicant. There is an additional cost for such iterations. However, if the small corrections are suggested by the USPTO, Sagacious IP includes the same within the design patent search budget.

Conclusion

Design search is an essential part of IP analytics that helps the inventor to know if their design is actually unique. A thorough report helps inventors design around their product in case an exact design is identified during the search.

If you are an inventor or a businessperson, Sagacious IP’s team of IP experts can help you with checking the patentability of your designs. We have over a decade-long experience in a wide range of design patents and trademark-related services. You can visit the design patent search service page to know more.

– Prabha Shankar, Rohit Joshi (Engineering Searching) and the Editorial Team

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