On June 15, 2020, the United States Patent and Trademark Office (USPTO) announced a prioritized examination procedure for COVID-19-related trademark and service mark applications.
Usually, the USPTO examines applications in the order in which they are received, with limited circumstances under which an applicant may file for a petition for the advance of an application. However, in response to the COVID-19 pandemic and the need to develop medical services and products, the USPTO announced that applicants may file a prioritization petition to advance certain applications.
The USPTO announced that it will accept petitions to expedite the initial examination of applications for trademarks and services marks used to identify COVID-19 medical products and services. To qualify for the prioritized examination procedure, the application must include one or more of the following qualifying goods or services:
- “Pharmaceutical products or medical devices such as diagnostic tests, ventilators, and personal protective equipment, including surgical masks, face shields, gowns, and gloves that prevent, diagnose, treat, or cure COVID-19 and are subject to approval by the United States Food and Drug Administration; and
- medical services or medical research services for the prevention, diagnosis, treatment of, or cure for COVID-19.”
The United States Food and Drug Administration approvals for the above-mentioned medical or pharmaceutical products may include, but are not limited to, Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA).
Applicants who wish to submit a prioritization petition must: (1) first file an application for the qualifying goods or services; and, (2) then file a Petition to the Director, which should include the mark’s newly assigned serial number. The petition must include a statement of facts along with an affidavit or declaration, stating why the applied-for COVID-19-related goods or services are of a type that qualifies for the prioritized examination. Finally, the petition must also include the Code of Federal Regulation section under which the goods or services are regulated. Citing that the effects of the COVID-19 outbreak are an “extraordinary situation” within the scope of 37 CFR § 2.148, the USPTO also announced that it will waive the fees for such petitions.
According to a statement by the Director of the USPTO, Andrei Iancu, “inventors and entrepreneurs are working around the clock to develop products that will help prevent, diagnose, treat, or cure COVID-19 [and] accelerating initial examination of COVID-19-related trademark applications for these products, as well as service mark applications for medical and medical research services, will help to bring important and possibly life-saving treatments to market more quickly.”
According to the USPTO notice, if the prioritized examination petition is granted, it may expedite the examination by approximately two months. Although the applicant will still have six months to respond to any USPTO Office Action, a prompt response would further advance the application to publication. After publication in the Official Gazette, the applicant must still wait the mandated 30 days to give the public a chance to oppose the registration.
The USPTO stated that it will notify the public before it modifies or ends this program. In the meantime, applicants seeking to register qualifying COVID-19 medical-related goods and services may wish to take advantage of the accelerated examination process.