27Jul 2022

{4 minutes to read}  To further support the acceleration of innovations in the fight against COVID-19, the United States Patent and Trademark Office (USPTO or Office) is extending the modified COVID-19 Prioritized Examination Pilot Program, which provides a prioritized examination of certain patent applications. Requests that comply with the pilot program’s requirements and are filed on or before December 31, 2022, will be accepted. The USPTO will evaluate whether to terminate or further extend the program during this extension period.

The COVID-19 Track One Notice indicated that an applicant may request a prioritized examination without payment of the prioritized examination fee and associated processing fee if:

  1. The patent application’s claim(s) covered a product or process related to COVID-19.
  2. The product or process was subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use, and 
  3. The applicant met other requirements noted in the COVID-19 Track One Notice.

As of May 16, 2022, 261 patents had been issued from applications granted prioritized status under the pilot program. The average total pendency, from the filing date or later submission of a request for continued examination, to the issue date for those applications was 280 days. The shortest pendency from filing to issue date for those applications was 75 days.

The Third Extension Notice indicated that the pilot program would expire on June 30, 2022. In the current notice, the USPTO is further extending the pilot program by setting the expiration date as December 31, 2022. The Office will evaluate whether to terminate or further extend the program during this fourth extension period. If the USPTO determines that an additional extension of the pilot program is appropriate, the Agency will publish a subsequent notice to the public. 

COVID-19 Prioritized Examination Pilot Program Description:

  • Applications must contain one or more claims to a product or process related to COVID-19.
  • Such claimed product or process must be subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use.
  • The request must include a certification that the applicant qualifies for either small or micro entity status and an executed Application Data Sheet (ADS) meeting the requirements of 37 CFR 1.53(f)(3)(i).
  • Applicants must file a grantable request under this initiative using the USPTO patent electronic filing system (EFS-Web or Patent Center) if filing the request in a utility application.
  • Applicants should use Pilot Program Form PTO/SB/450 to request participation in the pilot. 

The pilot is open to non-continuing, original, nonprovisional utility or plant patent applications filed with an acceptable request to participate original, nonprovisional utility or plant applications making a benefit claim under 35 U.S.C. 120, 121, or 365(c) to one prior nonprovisional application or one prior international application designating the United States filed with an acceptable request to participate utility or plant applications, including the national stage of a prior international application, in which an acceptable request to participate has been filed with or after a request for continued examination (RCE) if no prior RCE was granted prioritized examination status. 

The fees set forth in 37 CFR 1.17(c) and (i)(1) are not required to participate in the program. Any application that claims the benefit of the filing date of two or more previously filed non-provisional U.S. applications or international applications designating the United States under 35 U.S.C. 120, 121, or 365(c) is not eligible for participation in this pilot but the applicant may request prioritized examination under 37 CFR 1.102(e).

Benefit claims to one or more prior provisional applications under 35 U.S.C. 119(e) or foreign priority claims under 35 U.S.C. 119(a)-(d) or (f) will not cause a non-provisional application to be ineligible for this pilot.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Silvia@salvdorilaw.com
Please contact me at silvia@salvadorilaw.com with questions or comments.