[Federal Register Volume 90, Number 155 (Thursday, August 14, 2025)]
[Rules and Regulations]
[Pages 39124-39126]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-15497]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2025-0004]
RIN 0651-AD83
Eliminating Expedited Examination of Design Applications
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO)
previously suspended expedited examination of design applications
effective April 17, 2025. Further to the suspension, the USPTO hereby
amends the Rules of Practice in Patent Cases by removing the provisions
in the Code of Federal Regulations that provide for expedited
examination of design applications. The removal of those regulations
supports the USPTO's efforts to reduce the pendency of unexamined
design applications, which will benefit all design patent applicants.
The removal also facilitates the USPTO's efforts to address the problem
of erroneous micro entity certifications, as well as the USPTO's
broader efforts to mitigate and protect against threats to the
intellectual property system.
DATES: This rule is effective August 14, 2025.
FOR FURTHER INFORMATION CONTACT: Erin Harriman, Senior Legal Advisor,
Office of Patent Legal Administration, at 571-272-7747.
SUPPLEMENTARY INFORMATION:
I. Background
The USPTO previously suspended the expedited examination of design
applications under 37 CFR 1.155 effective April 17, 2025. See
Suspension of Expedited Examination of Design Patent Applications, 1533
Off. Gaz. Pat. Office 212 (April 29, 2025) (Suspension Notice). As
detailed in the Suspension Notice, the USPTO suspended the expedited
examination of design applications because an extraordinary situation
existed, and justice required the suspension. Specifically, there had
been a significant increase in the number of requests for expedited
examination of design applications, which negatively impacted the
pendency of all design applications. The Suspension Notice also noted a
significant increase in the number of erroneous micro entity
certifications from applicants who do not qualify for micro entity
status, coupled with heavy use of the expedited examination procedure
by these applicants. The combination led to longer wait times for all
applicants seeking design patents, including legitimate micro entity
applicants, and revenue loss for the USPTO. The USPTO therefore
suspended the expedited examination procedure for design applications
to support its efforts to reduce the pendency of unexamined design
applications and facilitate its efforts to address the problem of
erroneous micro entity certifications, as well as its broader efforts
to mitigate and protect against threats to the intellectual property
system.
As a result of the suspension, the USPTO will not grant any request
for expedited examination of a design application filed on or after
April 17, 2025. The phrase ``any request'' encompasses initial and
renewed requests. Accordingly, the USPTO will not grant a renewed
request filed on or after April 17, 2025, irrespective of the filing
date and time of the initial request, and whether the USPTO's dismissal
of the initial request afforded the applicant an opportunity to submit
a renewed request to rectify the deficiency. Additionally, 37 CFR 1.155
requires a complete request to include the fee under 37 CFR 1.17(k).
The USPTO will sua sponte refund the fee under 37 CFR 1.17(k)
associated with any request filed on or after April 17, 2025. The USPTO
also removed form PTO/SB/27, titled ``REQUEST FOR EXPEDITED EXAMINATION
OF A DESIGN APPLICATION (37 CFR 1.155),'' from the USPTO's website, and
decommissioned the corresponding document code--ROCKET--in Patent
Center.
Further to the suspension, the USPTO hereby amends the Rules of
Practice in Patent Cases by removing and reserving 37 CFR 1.17(k) and
1.155.
Although the expedited examination of design applications under 37
CFR 1.155 is eliminated, design patent applicants still have the
ability to advance the examination of a design application in certain
limited circumstances. Specifically, the Accelerated Examination
program remains in effect for design applications where an applicant
files a petition to make special with the appropriate showing and fee.
See section 708.02(a) of the Manual of Patent Examining Procedure
(MPEP) (9th Edition, Rev. 01.2024, November 2024) and Discontinuation
of the Accelerated Examination Program for Utility
[[Page 39125]]
Applications, 90 FR 24324 (June 10, 2025). In addition, under 37 CFR
1.102(c)(l), a petition to make an application special may be filed
without a fee where the basis of the petition is the applicant's age or
health. See section 708.02, subsections I and II, of the MPEP.
II. Regulations Being Removed
This rulemaking removes the regulations concerning the expedited
examination of design applications in 37 CFR part 1.
In particular, this rulemaking removes Sec. 1.17(k). Section
1.17(k) sets forth the fee for filing a request for expedited
examination under Sec. 1.155(a).
This rulemaking additionally removes Sec. 1.155. Section 1.155
established an expedited procedure for design applications for the fee
set forth in Sec. 1.17(k), whereby such applications are examined with
priority and undergo expedited processing through the entire course of
prosecution in the USPTO.
III. Discussion of Rule Changes
Part 1
Section 1.17: Section 1.17(k) is removed and reserved.
Section 1.155: Section 1.155 is removed and reserved.
IV. Rulemaking Considerations
A. Administrative Procedure Act: This final rule eliminates the
provisions and fee for the expedited examination of design
applications. It does not change the substantive criteria of
patentability for design applications. The changes are procedural in
nature and do not impose any additional requirements on applicants.
Therefore, the changes in this rulemaking involve rules of agency
practice and procedure and/or interpretive rules and do not require
notice-and-comment rulemaking, pursuant to 5 U.S.C. 553(b)(A). See
Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) (explaining
that interpretive rules ``advise the public of the agency's
construction of the statutes and rules which it administers'' and do
not require notice-and-comment when issued or amended); Cooper Techs.
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (5 U.S.C. 553,
and thus 35 U.S.C. 2(b)(2)(B), do not require notice-and-comment
rulemaking for ``interpretative rules, general statements of policy, or
rules of agency organization, procedure, or practice''); In re Chestek
PLLC, 92 F.4th 1105, 1110 (Fed. Cir. 2024) (noting that rule changes
that ``do[ ] not alter the substantive standards by which the USPTO
evaluates trademark applications'' are procedural in nature and thus
``exempted from notice-and-comment rulemaking.''); and JEM Broadcasting
Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (``[T]he `critical
feature' of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that
it covers agency actions that do not themselves alter the rights or
interests of parties, although [they] may alter the manner in which the
parties present themselves or their viewpoints to the agency.' ''
(quoting Batterton v. Marshall, 648 F.2d 694, 707 (DC Cir. 1980))).
Accordingly, the USPTO implements this final rule without prior notice
and opportunity for comment.
Also, the 30-day delay in effectiveness set forth in 5 U.S.C.
553(d) is specific to substantive rules. Because the changes in this
rulemaking involve rules of agency practice and procedure and/or
interpretive rules, rather than substantive provisions, the 30-day
delay is not required.
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553 or any
other law, neither a Regulatory Flexibility Act analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) is required. See 5 U.S.C. 603.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (September 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The USPTO has complied with Executive Order 13563 (January 18,
2011). Specifically, and as discussed above, the USPTO has, to the
extent feasible and applicable: (1) reasonably determined that the
benefits of the rule justify its costs; (2) tailored the rule to impose
the least burden on society consistent with obtaining the agency's
regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public
in an open exchange of information and perspectives among experts in
relevant disciplines, affected stakeholders in the private sector, and
the public as a whole, and provided online access to the rulemaking
docket; (7) attempted to promote coordination, simplification, and
harmonization across government agencies and identified goals designed
to promote innovation; (8) considered approaches that reduce burdens
while maintaining flexibility and freedom of choice for the public; and
(9) ensured the objectivity of scientific and technological information
and processes.
E. Executive Order 14192 (Deregulation): This regulation is not an
Executive Order 14192 regulatory action because it has been determined
to be not significant under Executive Order 12866.
F. Executive Order 13132 (Federalism): This rulemaking pertains
strictly to federal agency procedures and does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
G. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (November
6, 2000).
H. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
I. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (February 5, 1996).
J. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (April
21, 1997).
K. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (March 15, 1988).
L. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), the USPTO will submit a report containing
the final rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
rulemaking are not expected to result in an annual effect on the
economy of $100 million or more, a
[[Page 39126]]
major increase in costs or prices, or significant adverse effects on
competition, employment, investment, productivity, innovation, or the
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this
rulemaking is not expected to result in a ``major rule'' as defined in
5 U.S.C. 804(2).
M. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of $100 million (as adjusted) or more in any one
year, or a Federal private sector mandate that will result in the
expenditure by the private sector of $100 million (as adjusted) or more
in any one year, and will not significantly or uniquely affect small
governments. Therefore, no actions are necessary under the provisions
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
N. National Environmental Policy Act of 1969: This rulemaking will
not have any effect on the quality of the environment and is thus
categorically excluded from review under the National Environmental
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
O. National Technology Transfer and Advancement Act of 1995: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions that involve the use of
technical standards.
P. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of
1995 (44 U.S.C. 3501 et seq.) requires that the USPTO consider the
impact of paperwork and other information collection burdens imposed on
the public. The collection of information involved in this final rule
has been reviewed and previously approved by OMB under control number
0651-0031. In view of this final rule, the USPTO will submit an update
to the 0651-0031 information collection in the form of a nonsubstantive
change request.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
Q. E-Government Act Compliance: The USPTO is committed to
compliance with the E-Government Act to promote the use of the internet
and other information technologies, to provide increased opportunities
for citizen access to Government information and services, and for
other purposes.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons stated in the preamble, the USPTO amends 37 CFR
part 1 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
Sec. 1.17 [Amended]
0
2. Section 1.17 is amended by removing and reserving paragraph (k).
Sec. 1.155 [Removed and Reserved]
0
3. Remove and reserve Sec. 1.155.
Coke Morgan Stewart,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 2025-15497 Filed 8-13-25; 8:45 am]
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