June 17, 2020
On June 15, 2020, the United States Patent and Trademark Office (“USPTO”) announced a new COVID-19 prioritized examination program for trademark and service mark applications relating to goods and services useful for combatting and adapting to COVID-19. The new program accepts petitions to advance the initial examination without payment of an additional fee.
In general, the USPTO examines applications in the order they are received, however, there are procedures where an applicant may request that the initial application be advanced when special circumstances exist pursuant to 37 C.F.R. § 2.146(a)(3). This section permits an applicant to file a petition to the Director of the USPTO to have the Director exercise supervisory authority to advance the initial application out of its regular order.
In response to the COVID-19 pandemic and in recognition of the need to develop medical products and services and get such products and services to the market to address the COVID-19 virus, the Director will accept petitions to advance the initial examination for marks related to such products and services. Qualifying goods and services include: (i) “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 (ii) “medical services or medical research for the prevention, diagnosis, treatment of, or cure for COVID-19.” Additionally, the USPTO will waive the fee for such petitions, as the COVID-19 pandemic is considered an “extraordinary situation.”
To be eligible to apply for expedited review, an applicant must first file the trademark application and then file a petition to the Director that includes the application serial number through the Trademark Electronic Application System (“TEAS”). The petition has certain requirements and must include a statement of facts with a supporting affidavit or declaration pursuant to 37 C.F.R. § 2.20. This statement must detail the applicant’s COVID-19 medical goods or services associated with the subject mark and also explain why the goods or services qualify for prioritized examination.
The goal of the program is to expedite the application process for eligible applications, and if a petition for expedited review is granted under this program, the application will be immediately assigned to an examining attorney, which will expedite examination of the subject mark by approximately two months. The program will remain in effect until the USPTO determines that the program needs to be modified or is no longer needed.