By: Katherine Rubino

On May 8, 2020, the United States Patent and Trademark Office (USPTO) announced the new COVID-19 Prioritized Examination Pilot Program.[1] This pilot program allows for prioritized examination of qualifying patent applications by applicants with small or micro entity status without the applicant having to pay the typical fees associated with prioritized examination.[2] Normally, the goal of prioritized examination is to provide a final disposition regarding patentability within 12 months.[3] Under this pilot program, the USPTO announced that it believes it can provide final disposition within six months if applications provide more timely responses to notices and actions from the USPTO.[4]

To qualify for this program, the claims of a patent application must cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.[5] The pilot program will start to accept requests for prioritized examination on July 13, 2020, until the USPTO has accepted a total of 500 requests under the pilot program.[6] The USPTO may extend the pilot program or terminate it depending on the amount of resources necessary to administer the program.[7]

Applicants seeking to file an application under this pilot program are encouraged to use form PTO/SB/450, entitled “Certification and Request for COVID-19 Prioritized Examination Pilot Program under 37 CFR 1.102(e).[8] This form contains the qualifications necessary to participate in the pilot program and aids the USPTO in identifying and timely processing applications.[9]

Once an application is accepted into the pilot program, there is no provision for withdrawal from its special status under the program.[10] However, filing a petition for any extension of time will result in termination of special status.[11] In addition, presenting more than one priority claim to previously filed nonprovisional U.S. applications or international applications designating the United States will also result in the termination of special status.[12] An applicant can abandon an application that has been granted expedited review under the pilot program in favor of a continuation application, but the continuation application will not be automatically given prioritized review.[13] Each application on its own must meet all requirements for prioritized review under the pilot program.[14]

The goal of this program is to complete an application examination within 12 months of prioritized review being granted.[15] The 12 month goal is achieved when a final disposition from the USPTO is granted, including a notice of allowance, the mailing of a final office action, the filing of a request for continued examination (RCE), abandonment of an application, or filing of a notice of appeal.[16] In some instances, the 12 month time frame is a target, and final disposition from the USPTO may occur later than 12 months.[17] Applicants interested in filing an application under this program can ensure expedience of review by promptly replying to notices from the USPTO.[18]

[1] https://www.uspto.gov/about-us/news-updates/uspto-announces-covid-19-prioritized-examination-pilot-program-small-and

[2] Id.

[3] Id.

[4] Id.

[5] https://www.federalregister.gov/documents/2020/05/14/2020-10372/covid-19-prioritized-examination-pilot-program

[6] Id.

[7] Id.

[8] Id.

[9] Id.

[10] Id.

[11] Id.

[12] Id.

[13] Id.

[14] Id.

[15] Id.

[16] Id.

[17] Id.

[18] Id.