COVID-19 IP Update – United States

This update offers information on two new programs that are available in the United States. The Prioritised Examination Pilot Program provides free expedited examination of COVID-19 related applications for small companies. The Patents 4 Partnerships program delivers a database for listing COVID-19 related applications and patents that are available for licensing.

As the United States struggled to contain the spread of coronavirus through April, President Donald Trump issued a proclamation on World Intellectual Property Day stating that “the importance of IP has never been more apparent than it is now, as we continue the ongoing battle against the coronavirus”. Furthermore, with the US economy being a major consideration in relaxing lockdown measures, Trump stated that IP intensive industries account for nearly one-third of all employment in the US, and approximately 40 percent of GDP. So, what is the US Patent and Trademark Office (USPTO) doing to help inventors contribute all they can in the fight against the virus? What is the United States’ COVID-19 IP response?

COVID-19 Prioritised Examination Pilot Program

This pilot program provides prioritised examination, without a fee, if:

• the applicant is entitled to small or micro entity status under 37 CFR 1.27 when the request is made;
• at least one claim of the application is directed to a product or process subject to an applicable Food and Drug Administration approval, such as Investigational New Drug application, a Premarket Approval or an Emergency Use Authorisation, and be for the prevention and/or treatment of COVID-19; and
• the application claims priority from no more than one US non-provisional or PCT application.

The USPTO endeavours to reach final disposition of applications in this program within six months if applicants respond promptly to communications.

Requests for inclusion in the program can be filed from 13 July 2020. However, it is advised to file your request as early as possible after this date, as the program will, at least initially, only accept 500 requests.

The USPTO normally charges, under 37 CFR § 1.17(c), a prioritised examination fee of $1,000 for micro entities and $2,000 for small entities. Furthermore, a processing fee, under 37 CFR § 1.17(i)(1), of $35 for micro entities and $70 for small entities is usually levied. Neither of these fees are charged under the abovementioned program.

Patents 4 Partnerships

This program provides a marketplace for patent proprietors to list patent applications and patents related to COVID-19 technologies and that are available for licensing. “Related” is to be interpreted broadly, in that any technology useful in the fight against COVID-19 can be listed; that is everything from preventative measures, diagnosis and treatment, through to vaccines.

“With an initial focus on COVID-19, the platform shows how innovation can contribute to the nation’s response to this critical health emergency.” – Andrei Iancu, Director of the USPTO

The program is intended to provide a searchable database of available technologies in an easy to use and easily accessible format, with the hope that this will lead to more partnerships between companies and thus more rapid development of technologies in this field. The database can be searched by keyword, inventor name, assignee and issue date.

The platform can be found here, and applications/patents can be submitted for listing using this form.

The USPTO is closely monitoring the effectiveness of the program, with the possibility of expanding it to other key technological areas in the future.

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