USPTO Takes Measures to Help Small Businesses Patent and License COVID-19 Inventions

On May 8, 2020, the United States Patent and Trademark Office (USPTO) announced a new COVID-19 Prioritized Examination Pilot Program. Under this Pilot Program, the USPTO will grant qualified requests for prioritized examination of COVID-19-related patent applications without requiring payment of fees associated with other prioritized examination programs.

Why is the COVID-19 Prioritized Examination Pilot Program important? This Pilot Program is the latest measure by the USPTO to spur innovation related to fighting the coronavirus. “Independent inventors and small businesses are often the difference makers when it comes to cutting-edge innovation and the growth of our economy,” said USPTO Director Andrei Iancu. “They are also in most need of assistance as we fight this pandemic.” Iancu continued, “Accelerating examination of COVID-19-related patent applications, without additional fees, will permit such innovators to bring important and possibly life-saving treatments to market more quickly.”

Who may participate in the Pilot Program? Applicants of COVID-19-related patent filings who qualify for either small entity (37 C.F.R. §1.27) or micro entity status (37 C.F.R. §1.29) may participate.

When can I apply? On May 14, 2020, the USPTO started accepting requests for prioritized examination under the COVID-19 Prioritized Examination Pilot Program.

How long will the Pilot Program continue? The program will continue until the USPTO has accepted a total of 500 requests. As of May 28, 2020, the USPTO had received 61 applications for the COVID-19 Pilot Program and had accepted 3 applications, leaving 497 available positions.

What patent claims are eligible for prioritized examination? A party requesting prioritized examination must certify that at least one of the pending claims covers a product or process related to COVID-19 and that such product or process is subject to an applicable FDA approval for COVID-19 use.

What fees are waived? The fees normally associated with other USPTO prioritized examinations programs are waived: (1) the prioritized examination fee (37 C.F.R. §1.17(c)), and (2) the processing fee (37 C.F.R. §1.17(i)(1)). (See USPTO Fee Schedule.)

When will my patent issue? The objective of the Pilot Program is to complete, on average, the examination of an application within 12 months of special prioritized status being granted. The 12-month time frame is a goal. The USPTO will, however, “endeavor to reduce pendency, from approval of the request for prioritized examination to final disposition, to six months if all replies occur within 30 days of a notice by the USPTO.” Under the other USPTO accelerated program already in place, the average pendency of a patent application from filing of the petition to issue or abandonment was 12.58 months in 2015, as the latest information available.

Has the USPTO initiated other COVID-19 programs? On May 4, 2020, the USPTO launched another initiative to facilitate innovation in the COVID-19 era. Patents 4 Partnerships, also known as the “USPTO IP Marketplace Platform,” a new web-based intellectual property marketplace platform, was created to provide the public with a searchable repository of patents and published patent applications related to the COVID-19 pandemic that are available for licensing. Participation in this program is voluntary. Patents 4 Partnerships allows users to search and sort information in easy-to-use ways, including by keyword, inventor name, assignee, and issue date. The IP Marketplace is limited to listing US patent filings associated with products and technologies for the prevention, treatment, and diagnosis of COVID-19. Currently, there are more than 200 inventions listed on the USPTO IP Marketplace Platform.

Does participation make sense for your organization? Given their relatively small scale, it is unclear what impact these USPTO measures will have. The programs do, however, provide additional tools for inventors looking to more quickly obtain a patent related to COVID-19 or license a patent related to COVID-19 technology. These programs may be especially helpful to parties with more limited resources, such as startup companies, that have been hit hard during this pandemic and may need assistance in bringing their potentially life-saving COVID-19 related inventions to market.

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