USPTO’s COVID-19 Prioritized Examination Pilot Program

“Independent inventors and small businesses are often the difference-makers when it comes to cutting-edge innovation and the growth of our economy. They are also in most need of assistance as we fight this pandemic. 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.” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. [announcement]

Soon after deciding the inadmissibility of AI inventions under the US patent law, USPTO is again in headlines for their initiative to prioritise examination of patent applications relating to COVID-19. The announcement was made on May 8, 2020, to allow fast track examination for only COVID-19-related patent applications filed by small and micro-entities. This program has been made effective from May 13, 2020.

Applications allowed under the COVID-19 Prioritized Examination

 10 filed
granted
500 available
(Updated on May 15, 2020)

Some striking features under this new pilot program are: (Click for details)
a. The pilot program will accept only first 500 qualifying patent applications;
b. Requests for prioritized examination will only be granted to patent applicants that qualify for small or micro entity status;
c. The qualified patent applicants do not require to make payment of fees associated with other prioritized examination;
d. The goal of the pilot program is to decide on the application within 12 months from the date of granting the prioritized status;
e. USPTO would endeavour to dispose of the applications within six months, provided the applicants to respond promptly to communications from the USPTO;
f. Patent claims of an application must cover a product or process that is subject to the U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
g. This one is my favourite: If the qualified applicant files for an extension of time to reply to the office action, the status of the prioritized examination will terminate. This is a step to control the applicant’s act of voluntarily delaying the final disposition of the patent application.

Clarification

U.S. FDA approvals may include, but are not limited to, an 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). Information on these items are available at www.fda.gov

The phrase “product or process” includes any process, machine, manufacture, or composition of matter as set forth in 35 U.S.C. 101.

The qualified applicant is required to pay the basic filing fee, search fee, and examination fee

Additional resources and information pertinent to the program is available here.

One can draw an analogy from the above-quoted words (the growth of our economy) of Andrei Iancu that patents play a dual role in society. Earlier the patents were recognised only as a tool to spur innovation, however, now the patents have clearly transformed into a tool for driving the economy of the country as well. If that is so, then why are the inventions by AI not being given due importance under the US or EU patent law in light of their exceptional potential to strengthen the country’s economic growth. We have many reasons for not granting patents to the AI invention but one factor like economic growth of the country favoured by the AI invention should precede over all the odds.

Nevertheless, the whole concept of prioritised examination for the COVID related patent applications is in favour of public health as well. We wish to see some similar sorts of initiatives implemented under the National IPR policy for India announced recently.

*we will cover this in detail shortly.

That said, the fast track examination by USPTO reminds me of the Patent Prosecution Highway (PPH) started between the Indian Patent Office and the Japan Patent Office. Do you think that the Patent Prosecution Highway between India and Japan is rather a freeway to the Japanese applicants? I will be publishing my opinion on the same soon.

Till then,
Happy Patenting

About Krishnam Goyal 17 Articles
Krishnam is an LL.M. student at Munich Intellectual Property Law Center (MIPLC), Germany. He is an engineer, advocate and a patent agent in India. He holds around three years of working experience in the field of patent drafting and prosecution in the fields of ICT, electronics, computer-implemented inventions, mechanical engineering and green technology. The area of research that interests him is patenting of AI, SEPs, Green technology and climate change issues

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