Now that the expedited examination procedure for design patents has been suspended, what can practitioners do to speed up prosecution?
We know from pendency statistics that applications receiving rejections, objections, restrictions, and notices to file missing parts have significantly longer times from filing to issue. The practical solution is to anticipate and resolve these delay causing events before they occur. This article suggests a proactive approach that focuses on identifying and addressing potential issues before filing and before the first patent office response is received. After the examiner is assigned, the examiner’s past rejections and other tendencies can be researched and compared with your submitted application. If potential delay causing issues are identified, a preliminary amendment can be filed to proactively address the issues.
If during prosecution rejections or objections still are received, then targeted research can be conducted into how other practitioners successfully overcame them, preferably by focusing on the rejections and objections issued by the particular examiner assigned. This customized research should assist in responding to the office action more quickly and effectively.
While this suggested proactive approach requires more diligence and upfront effort, the reward is faster protection for designs that may have only fleeting commercial windows and active competition by copycats. In a post-rocket docket world, preparation and precision are the new accelerators.
Expedited Examination of Design Patent Applications
The expedited examination program for design patent applications under 37 CFR 1.155 was implemented by the U.S. Patent and Trademark Office (USPTO) on September 8, 2000. This program, often referred to as the “rocket docket,” was established to allow applicants to request accelerated examination of their design patent applications, provided certain conditions were met, including the payment of an additional fee and the submission of a pre-examination search. The aim was to reduce the time it took for design patents to be examined and granted, which was particularly beneficial in industries where design trends change rapidly. The Discussion of Specific Rules and Response to Comments in the Federal Register dated September 8, 2000 states “[t]his cost-based 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.”
Expedited examination for design patents proved to be remarkably effective. Using just data from January 1st through May 27, 2025 (Time Period), a total of 20,999 design patents issued with an average filing to issuance time of 21 months. Of these, 4,800 were examined under the expedited procedure, with an average filing to issuance time of just 7 months. In contrast, the 16,199 non-expedited applications took an average of 26 months.
Even when a non-final rejection was received during prosecution, the rocket docket maintained its effectiveness. During the same Time Period, 7,411 design patents issued with at least one non-final rejection (35% of total). Of these, 5,957 applications were not expedited and had an average filing to issue time of 30 months. However, the 1,454 applications that were expedited through the rocket docket had an average filing to issue time of just 9 months.
Suspension of the Expedited Examination Program
The USPTO suspended the expedited examination program on April 17, 2025, citing a significant surge in requests and erroneous micro entity certifications among expedited design patent applications. In the suspension notice, the USPTO explained that rocket docket requests had increased by 560%, with nearly 20% of all design patent applications in fiscal year 2024 seeking expedited processing (in 2025 through May 27, the percentage has climbed to 23%). This overwhelming demand strained the USPTO’s resources, leading to longer wait times for standard (non-expedited) design applications and negatively impacting the overall efficiency of the examination process.
By suspending the Rocket Docket program, the stated goal of the USPTO is to reallocate examination resources more effectively, reduce the backlog of unexamined design applications, and ensure a fair and efficient examination process for all applicants. The USPTO has pointed out that while expedited examination under 37 CFR 1.155 is suspended, applicants may still request prioritized examination under certain conditions, such as based on the applicant’s age or health, as outlined in 37 CFR 1.102(c)(1).
Disparity in Expedited Examination Filings
Data from the expedited examination program reveals that some attorneys and agents are using it more often than others. In the past year (from May 28, 2024, to May 20, 2025), of the 47,859 design patents issued, 16,436 had a least one non-final rejection. Of these 16,436 issued patents, rocket docket requests were filed in 2,884. In a sample size of 2,394 of these 2,884 issued patents, a relatively small number of design patent attorneys and agents accounted for a large share of all expedited design filings. For example, fewer than ten attorneys or agents were responsible for more than 1,000 of the expedited applications filed during the review period, while the vast majority of registered practitioners either filed none or less than a handful. Note: Numbers approximate due to variability in OCR processing of PDF documents.
Rocket Docket Requests | Filers | Low | High |
|
|
|
|
101-250 (1,190) | 9 | 102 | 240 |
26-100 (594) | 11 | 26 | 92 |
11-25 (195) | 13 | 11 | 20 |
6-10 (121) | 17 | 10 | 6 |
2-5 (163) | 67 | 2 | 5 |
1 (126) | 126 | 1 | 1 |
Total 2,394 | 243 | 1 | 240 |
If the USPTO considers this imbalance unfair, then ensuring more equitable access and distributed use to any future acceleration programs may require greater outreach, clearer guidance, and perhaps more structured limitations on how frequently the program can be used. One such possible limitation to consider would require submitting a declaration confirming that certain criteria are present. For example, that the claimed design pertains to a product within a pre-designated industry or category recognized by the USPTO as having short product lifespans, or a case-by-case justification with supporting documentation that the claimed design pertains to an article with a short commercial life cycle. Supporting documentation might include industry reports, sales data, market research, or prior turnover data for comparable products. An applicant could also be required to certify that the claimed design already has been commercially launched or will be launched within six months of filing.
Importance of Speed in the Design Patent Application Process
Prosecution speed usually is important for design patents because a design patent cannot be enforced until it issues. Early enforcement is particularly important in industries with short marketing cycles such as housewares, electronics, furniture, and fashion accessories. Online sales platforms such as Amazon and eBay often require an issued design patent to remove copycats. A granted design patent also can play a critical role in developing trade dress rights and attracting investors, partners, or buyers. It demonstrates that the company has secured exclusive rights to the visual design of its product, creating a legal barrier to entry for competitors and enhancing the company’s valuation. In competitive markets, even a few months of delay can mean missing peak sales windows or falling behind rival product launches. For startups, a fast-granted design patent can bolster pitch decks and due diligence materials during funding rounds.
Primary Causes of Delay
Practitioners seeking to reduce pendency time without a request for expedited examination should consider identifying and eliminating or reducing the primary causes of delay. These include rejections, objections, restrictions, and notices to file required documents. In 2025 through May 27 (Time Period), 35% of all granted applications received at least one non-final rejection. In those applications where a request for expedited examination was not filed, the filing to issuance time jumped to 30 months.
Objections in Ex Parte Quayle Actions were issued in 22% of all granted applications in the Time Period (4% of which received both a non-final rejection and Ex Parte Quayle Action). For these applications filed without a rocket docket request, the average pendency time was 28 months.
Restriction Requirements were issued in 9% of granted applications during the Time Period, resulting in an average pendency time of 33 months for those filed without a rocket docket request. Note that many of these applications also received a rejection or objection.
Final Rejections were issued in 6% of granted applications in the Time Period, and for those filed without a rocket docket request, the average pendency time was 36 months.
For applications that managed to avoid all of the above, the average pendency time was 21 months.
Proactive Approach can Reduce Pendency Time
The commonsense implications of the above statistics are clear. Eliminate rejections, objections, and restrictions (and respond quickly if one is received), and pendency time will decrease. For those granted applications in the Time Period without a rejection, objection, restriction, or rocket docket request, the average pendency time was 21 months. This pendency time no doubt will decrease as the rocket docket gets phased out and all design applications are treated equally.
Such an approach not only reduces pendency time for a specific application, it benefits the patent system as a whole. The Patent Office suspended the rocket docket largely because it determined that the program was unfairly extending the pendency of non-expedited design patent applications. Since resources are limited, prioritizing some applications necessarily delayed others. In contrast, a proactive approach to prosecution is not zero-sum. By streamlining the examination of a particular application through clear drawings, a well-drafted specification, proactive amendments, and prompt, strategic responses, applicants can reduce the time the examiner must spend on that application. This frees up examiner resources for other applications, benefiting the entire system. Everyone wins.
Proactive Strategy and Specific Steps that can be Taken
Design patent practitioners interested in expediting the process without a rocket docket request should consider pursuing a proactive prosecution strategy. Such a strategy might involve (1) ensuring that all required documents are filed initially, (2) conducting a prior art search and providing an information data sheet (IDS), (3) carefully reviewing drawings for consistency and definiteness, (4) comparing and checking the claim and specification language submitted (e.g., title, drawing descriptions, broken line statement, feature statement) against historically acceptable language in past applications, (5) being proactive about issues such as restrictions, obviousness rejections, anticipation rejections, and double patenting rejections.
After the application is filed and an examiner is assigned, additional insights on how the examiner may react to various predictable issues may be gained by researching how the examiner has handled such issues in past applications. Spending some time reviewing the particular examiner’s rejections in recent prosecutions can provide an eye-opening perspective on potential problems with the application that may have been overlooked before filing. If additional problems are identified, preliminary amendments may be filed before the first office action.
While this article cannot cover all the potential rejections, objections, and other delay causing events, some major ones are discussed below with some general thoughts and tips about how to avoid, anticipate, or respond to them. This proactive approach necessarily will result in additional fees and expenses on the front end. However, for those design patent applications attempting to protect designs where competitor copycats are siphoning off substantial revenue streams, the additional fees and expenses should be well worth it.
Common Rejections and How to Avoid Them
The most common rejections include incorrect broken line statements, section 112 indefiniteness for failure to disclose depth, inconsistent and defective drawings, incorrect figure descriptions, incorrect feature statements, and incorrect titles. Other common but less frequent rejections are for double patenting, section 103 obviousness, and section 102 anticipation.
Broken Line Statements
Since broken lines can be used in drawing figures for a number of reasons, the broken line statement must expressly identify the purpose of the broken lines and define their relationship to the claimed design. Although this requirement appears straightforward, the requirement for precision results in many broken line statement rejections. Applicants should understand the proper structure of a broken line statement and double check to make sure that their broken line statement will not draw an objection. One way to do this is to research relevant portions of the broken line statement to see whether it has drawn a rejection in past applications.
For example, the following ten common rejections and recommendations for overcoming each one were obtained by reviewing past patent prosecution histories (data from ProSearch by Design Patent Pro).
Rejection 1. Using the phrase “for illustrative purposes only.” For example, “the broken lines are for illustrative purposes only and form no part of the claimed design.”
Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.”
Rejection 2. Using the term “environmental” without further description. For example, “the broken lines shown are environmental only and form no part of the claimed design.”
Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.”
OR
Recommended form: “The broken lines show environment to the [title] and form no part of the claimed design.”
Rejection 3. Failure to include different types of broken lines with appropriate descriptions. For example: “The broken lines show environmental structure and boundaries and form no part of the claimed design.”
Recommended form: “The dash-dash broken lines show portions of the [title] that form no part of the claimed design. The dash-dot broken lines show boundaries and form no part of the claimed design.”
(remaining seven examples are at end of article)
Indefinite and Non-Enabled Design Elements
Failure to disclose depth is one the most common rejections because this defect is easy to overlook in drawing figures. A suggested approach is to carefully study the drawing figures with only this issue in mind. Double check to make sure that the depth and height of all design features shown in elevation and plan views can be determined from perspective views. If they cannot be, consider adding additional perspective views (particularly a bottom perspective view, which is not as common as a top perspective view). If perspective views are insufficient, consider adding a cross-sectional view.
Another common indefiniteness rejection is for areas existing between broken lines and solid lines. Without proper illustration or explanation, it will be unclear whether these areas are claimed. Consider the use of shading or an explanation for whether the areas are part of the claim.
Drawing Inconsistencies and Defects
Common rejections result from inconsistencies between drawing figures and poor line quality such as broken lines merging into solid lines. It is important that the applicant be familiar with the rules on drawings and carefully review the drawing figures for these potential issues. Using a professional draftsman familiar with the strict requirements of design patent drawings usually is well worth the investment. A professional draftsman also can provide a second set of eyes to review the drawings from a fresh perspective. Drawing inconsistencies can be minimized by using alignment sheets that show all views and that use guidelines to ensure all features are shown consistently.
Figure Descriptions
Although descriptions of the figures are not required to be written in any particular format, they must describe the views of the drawing clearly and accurately. Common rejections include failure to specify the perspective shown (e.g., front, rear, top, bottom, left, right, or perspective view), mismatches between the description and the actual drawing (such as calling a figure a front view when it clearly depicts a perspective view), and using ambiguous language (e.g., referring to “the figure above” or “this view” instead of clearly stating “FIG. 1 is a front elevation view”). Examiners also frequently reject figure descriptions that imply function or structure not shown in the drawings, or that use inconsistent terminology across multiple figures. Comparing proposed figure descriptions against historically acceptable descriptions can help avoid objections and rejections.
Other Feature Descriptions
Although a feature description statement is optional, when included, it must be consistent with the drawings and limited to non-functional aspects of the design. Common rejections include asserting functionality (e.g., stating that a feature “supports weight” or “provides grip”), describing features not shown in the drawings, using vague or subjective language (e.g., “modern look” or “aesthetic appeal”), or attempting to limit or disclaim aspects of the design without using proper phrasing. Examiners also frequently object when the statement contradicts the claimed design, e.g., describing a portion as unclaimed or environment when it is shown in solid lines, or stating that certain features are “not part of the claimed design” without showing them in broken lines.
Titles
The title of a design patent application must identify the article in which the design is embodied and should be sufficiently descriptive to allow classification and searching by the USPTO. Common objections arise when titles are vague, overly broad, or do not match the figures. For example, titles like “Object” or “Device” are typically objected to as indefinite, while titles that suggest multiple, distinct articles (e.g., “Chair or Table”) may trigger a restriction requirement. Titles that include functional terms or marketing language (e.g., “Ergonomic Handle” or “Innovative Container”) are also problematic, as they imply function rather than identify the article.
Practitioners can reduce the risk of a title-related objection by using established naming conventions based on how similar products have been titled in prior granted design patents. If the article is new or unusual, it may help to include a brief description in the specification clarifying its function or intended use, provided that such a description does not introduce improper functionality. Researching the proposed title can help determine whether similar titles have drawn objections in the past and can guide the practitioner in choosing an acceptable and strategically sound title. Investing extra time in title research before filing can help avoid estoppel and new matter issues if the title is found unacceptable.
Obviousness
The decision in LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) overruled the long-standing Rosen-Durling test and replaced it with a more flexible approach. Under this new framework, examiners potentially may consider a broader range of prior art and may combine references even when the primary reference is not “basically the same” as the claimed design. Applicants can counter with arguments that no record supported reason exists to combine references, or even when references are combined, they do not result in the claimed design. Given the unsettled nature of the post-LKQ legal framework, practitioners should consider conducting a prior art search. If close prior art is found that may trigger an obviousness rejection, then practitioners should consider preemptively analyzing the prior art in the context of previous office actions involving obviousness analyzed under the new LKQ standard.
Anticipation by Inventor's Own Sales or Publications
Another common rejection under section 102 anticipation is when the examiner cites a prior art product design sold or publicly used by the patentee against the claimed design. This rejection can be overcome by a proper affidavit or declaration under 37 CFR § 1.130 if the sale or public use was made one year or less before the effective filing date of the claimed invention. To be proactive and avoid this type of rejection, the patentee should determine whether any products being sold are covered by the claimed design and submit the affidavit or declaration when the application is first filed.
Double Patenting
Double patenting rejections, and in particularly nonstatutory obviousness-type double patenting, are common in design patent prosecution when multiple applications are filed for similar or related designs. These rejections typically arise when the claimed design in a later-filed application is an obvious variation of a design claimed in an earlier-filed application by the same inventor or applicant. The examiner may find that the differences between the two claimed designs are insufficient to support separate patentability, particularly if the overall visual impression remains largely the same.
Practitioners can be proactive in anticipating and minimizing the risk of double patenting rejections by strategically drafting figure sets and claim scopes. For instance, where related designs are intended to be protected, applicants should consider filing all related applications on the same day and including a terminal disclaimer at the outset, if appropriate. If the practitioner intends to take the position that the claims are patentably distinct, then an argument to that effect can be included in the original submission.
Restriction Requirements
Restriction requirements in design patent applications are issued when the examiner determines that the drawings include more than one distinct and patentable design. These typically arise when multiple embodiments are disclosed that differ in more than trivial ways, such as changes in shape, proportion, or ornamentation. In some cases, even variations limited to broken line treatment or surface patterning may be deemed distinct enough to warrant a restriction. Once a restriction requirement is issued, prosecution is delayed while the applicant makes an election, and additional fees and divisionals may be required to protect the non-elected designs.
To avoid unnecessary restriction requirements, practitioners should carefully consider whether the disclosed embodiments represent a single design concept. If multiple embodiments are included, they should differ only in minor, non-patentable ways. Where multiple embodiments are desired for strategic purposes, they should be filed as separate applications or disclosed in a way that anticipates and accommodates the likelihood of a restriction. Researching an examiner’s past practices on restriction can provide helpful guidance on how likely a restriction may be and what justifications are typically offered. When faced with a restriction requirement, practitioners should evaluate whether a traversal is appropriate and weigh the value of pursuing additional embodiments through divisional filings.
Ex Parte Quayle Actions
An Ex Parte Quayle Action is issued when the examiner determines that the application is in condition for allowance except for formal objections. In design patent prosecution, these objections commonly relate to issues such as poor line quality, inconsistent or mislabeled figure descriptions, defective titles, or missing or inaccurate broken line statements. For example, examiners may object to lines that are too faint, too thick, or that merge inappropriately between solid and broken lines. Figure descriptions that do not clearly and correctly identify each view also frequently result in an Ex Parte Quayle Action.
Although an Ex Parte Quayle Action does not reject the application on substantive grounds, it can significantly delay prosecution because it requires a formal amendment and submission of corrected materials. To avoid this delay, practitioners should thoroughly review drawings and accompanying text before filing, ideally with the assistance of a professional draftsman. Reviewing prior applications for similar objections, especially those issued by the same examiner, can be useful in identifying potential red flags.
Notice to File Missing Parts
A Notice to File Missing Parts is issued when a design patent application is incomplete at the time of filing. Common reasons include missing inventor oaths or declarations, omitted drawings or views, unpaid basic filing fees, or missing application parts such as the specification or title. Receipt of such a notice delays examination and can result in abandonment if not timely corrected. In many cases, the delay caused by missing parts can extend pendency by several months, particularly when the deficiency is not identified until after docketing and initial processing.
To avoid receiving a Notice to File Missing Parts, practitioners should conduct a thorough pre-filing review of all required elements. Confirm that the oath or declaration is signed, the correct filing fee is paid, and that all required drawings and views are present and meet USPTO standards. Additionally, ensure that the title and figure descriptions are included and that the specification complies with formal requirements. Using a pre-filing checklist or workflow system can help reduce oversights. Where uncertainty exists, such as when a drawing might be considered non-compliant, preemptively addressing the issue through supplemental material can prevent delays.
Conclusion
The end of the rocket docket does not mean the end of fast design patent prosecution. Practitioners still have powerful tools at their disposal. By identifying and addressing likely sources of delay before they occur, and by responding efficiently when issues do arise, applicants can significantly reduce pendency without relying on a formal acceleration program. In today’s competitive landscape, where early issuance of a design patent may determine market success, preparation and precision are the most effective tools for timely protection.
Remaining seven broken line examples:
Rejection 4. Failure to state that the broken lines form no part of the claimed design. For example: “The dash-dot-dash broken lines in the drawings depict the boundaries of the claimed design.”
Recommended form: “The dash-dot-dash broken lines in the drawings depict boundaries of the claimed design and form no part of the claimed design.”
Rejection 5: Failure to name the article of manufacture. For example: “The broken lines form no part of the claimed design” or “The broken lines show portions of the article that form no part of the claimed design.”
Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.”
Rejection 6: Failure to describe the purpose of all broken lines in the drawings. For example, when there are two earphones shown: “The broken lines in the drawings depict portions of the earphone with charging case that form no part of the claimed design.”
Recommended form: “The broken lines on the earphone and charging case depict portions of the earphone with charging case that form no part of the claimed design. In [figure], the broken lines showing an additional earphone depict environment to the earphone with charging case and form no part of the claimed design.”
Rejection 7: Using the phrase “illustrate unclaimed features.” For example: “The broken lines illustrate unclaimed features that form no part of the claimed design.”
Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.”
Rejection 8: Describing multiple meanings to broken lines without specifying which meaning is correct. For example: “The broken lines show unclaimed portions of a [title], which are included for the purpose of illustrating unclaimed environment only, and form no part of the claimed design.”
Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.”
Rejection 9: Describing broken lines as being both portions of the article and environment. For Example: “The broken lines show portions of the article in which the claimed design is embodied and/or for environment purposes only, but which form no part of the claimed design.”
Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.”
OR
“The broken lines show environment to the [title] and form no part of the claimed design.”
OR
“The dash-dash broken lines show portions of the [title] that form no part of the claimed design. The dash-dot broken lines show environment to the [title of article] and form no part of the claimed design.”
Rejection 10: Failing to expressly identify what is represented by the broken lines and failing to define their relationship to the claimed design For Example: “The broken lines show structure and environment.”
Recommended form: “The broken lines show portions of the [title] that form no part of the claimed design.”
OR
“The broken lines show environment to the [title] and form no part of the claimed design.”
OR
“The dash-dash broken lines show portions of the [title of article] that form no part of the claimed design. The dash-dot broken lines show environment to the [title] and form no part of the claimed design.”
(data from ProSearch by Design Patent Pro)
Disclaimer: This article is for general information purposes only and is not intended to be legal advice.
