The United States Patent and Trademark Office (USPTO) recently announced that starting April 17, it’s suspending its expedited examination of design patents program, a tool that parties use to request faster examinations if they pay an additional fee and meet other requirements.
The program often significantly reduces wait times. As of February 25, the average wait time from the design application filing date to the first office action was 14 months. For applicants that utilized the program, the wait time was on average a month.
According to the USPTO, expedited requests surged by 560% in recent years and that was caused largely by fraudulent applications. However, some attorneys expressed frustration, as they found the program to be very beneficial.
“This is disappointing,” said Finnegan partner Beth Ferrill when Managing IP asked her about the change. “I have used it on behalf of legitimate clients who have real need and have found the process to be helpful.”
With this change, some firms are now looking at alternative ways to process applications. Beth said that parties may be more likely to use the Hague System, where applicants can register up to 100 designs in 99 countries. As part of this treaty, the USPTO is supposed to issue an office action within a year from the publication of the registration.
“We’ve filed applications that are taking more than two years to get an office action,” said Ferrill. “For some clients, the Hague System might be an option to speed things along. It won’t be as fast as the expedited system but won’t be as slow as the current one.”
She added, “If speed was very important to a client, I would steer them towards the Hague System more now than I would in the past.”
Read “Firms Weigh Alternatives Amid Fast-Track Design Patent Suspension”
