What to Know About the USPTO’s Expedited Process for COVID-Related Applications

A new virus – like the novel coronavirus that causes COVID-19 – requires new medical products to fight it. To speed to market medical products and services that are critical for combating COVID-19, the U.S. Patent and Trademark Office (USPTO) has implemented the COVID-19 Prioritized Examination Pilot Program for patent applications and the Petition to Prioritize Initial Examination for trademark applications. The USPTO recognizes that shortening the examination process and cutting prosecution costs for qualifying patent and trademark applications may help bring to market important technologies and treatments to combat COVID-19.

COVID-19 Prioritized Examination Pilot Program for Patent Applications

Effective as of May 14, 2020, the pilot program allows small and micro entities to prioritize examination of non-provisional patent applications related to COVID-19. The associated prioritized examination fee and processing fee will be waived, which would save about $2,000 for a small entity. The pilot program is initially limited to 500 qualifying patent applications. However, the USPTO may extend the program or terminate earlier in response to the resources needed to administer the program and the feedback from the public. As of September 17, 2020, 179 requests have been granted leaving 321 spots available.

Applicants must meet the following conditions to qualify:

• Applicant must be a qualifying small or micro entity at the time the request for the pilot program is made.
• The non-provisional application must have one or more claims related to COVID-19 and cover a product or process that is subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use.
• The application does not claim priority to two or more U.S. non-provisional applications or international applications designating the U.S.
• The application can be an original or a continuing non-provisional utility or plant patent application. A request for the program can be filed with or after a Request for Continued Examination (RCE) as long as the request is filed before the first USPTO Office Action after the RCE.

The program aims to complete the examination of an application within 12 months of being granted the prioritized status and potentially within six months if the applicants respond earlier than required (within 30 days) to USPTO notices.

Petition to Prioritize Initial Examination of Trademark Applications

As of June 15, 2020, the USPTO is accepting petitions to prioritize initial examination of COVID-19 related trademark and service mark applications. The USPTO Director has agreed to advance out of turn the examination of applications that specifically identify medical products and services to combat COVID-19.

To apply for the program, a petition for expedited examination should be filed with the USPTO after the application has been filed. The USPTO will waive the petition fee.

Qualifying applications must identify one or more of the following goods or services:

• Pharmaceutical or medical products that are subject to approval by the FDA and designed to prevent, diagnose, treat, and/or cure COVID-19.
• Medical research or services to prevent, diagnose, treat, and/or cure COVID-19.

Once the petition is granted, the trademark application will advance out of turn and immediately be assigned for examination. The program aims to expedite the examination process by about two months. The USPTO may modify or end the program by monitoring the workload and resources needed to administer the procedure. The program will remain available until an end date is announced.

The Intellectual Property Group at Levenfeld Pearlstein provides a wide range of patent, trademark, copyright, trade secret, and licensing services. We will continue to monitor developments related to COVID-19, and your ongoing intellectual property needs as well. Contact us with your questions or concerns.