2021-19114. Modification of COVID-19 Prioritized Examination Pilot Program

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) is modifying the COVID-19 Prioritized Examination Pilot Program to accept applications until December 31, 2021. Requests that are compliant with the pilot program's requirements and are filed on or before December 31, 2021, will be accepted, even if more than 500 requests have already been approved. The USPTO will evaluate whether to terminate or further extend the program during this extension.

DATES:

The COVID-19 Prioritized Examination Pilot Program is modified as of September 3, 2021 and is extended to run until December 31, 2021.

FOR FURTHER INFORMATION CONTACT:

Robert A. Clarke, Editor of the Manual of Patent Examining Procedure (MPEP) (telephone at 571-272-7735; email at [e-mail]).

SUPPLEMENTARY INFORMATION:

On May 14, 2020, the USPTO published a notice for the implementation of the COVID-19 Prioritized Examination Pilot Program. See COVID-19 Prioritized Examination Pilot Program, 85 FR 28932 (May 14, 2020) (COVID-19 Track One Notice). The COVID-19 Track One Notice indicated that an applicant may request prioritized examination without payment of the prioritized examination fee and associated processing fee if: (1) The 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 given in the COVID-19 Track One Notice. As of August 2, 2021, 120 patents have issued from applications granted prioritized status under the pilot program. The average total pendency, including time consumed by continued examination, from filing to issue for those applications was 249 days. The shortest pendency from filing date to issue date for those applications was 75 days.

The COVID-19 Track One Notice indicated that the pilot program would expire after the USPTO accepted 500 applications into the program. As of August 16, 2021, the USPTO had accepted 476 applications into the program, and there were 52 requests to participate that had not yet been acted upon. To ensure that applicants are not refused access to the pilot program due to delays in the USPTO's consideration of the requests to participate, the USPTO is modifying the program to consider on the merits any request filed on or before December 31, 2021, even if an applicant's request to participate is not acted upon until after the USPTO has accepted 500 requests. The USPTO will evaluate whether to terminate or further extend the program during this extension. If the USPTO determines that a further extension of the pilot program is appropriate, the USPTO will publish a subsequent notice further extending the program.

Unless the pilot program is further extended by a subsequent notice to the public, following the expiration of this extension, the pilot program will be terminated, and applicants may instead seek to use the Prioritized Examination (Track One) Program. Applications accorded prioritized examination under the pilot program will not lose that status merely because the application is pending after the date the pilot program is terminated. In other words, applications accepted into the pilot program will continue to be examined under prioritized examination status until that status is terminated for one or more reasons, as described in the COVID-19 Track One Notice.

The Prioritized Examination (Track One) Program permits an applicant to have an application advanced out of turn (accorded special status) for examination under 37 CFR 1.102(e) if the applicant timely files a request for prioritized (Track One) examination accompanied by the appropriate fees and meets the other conditions of 37 CFR 1.102(e). See MPEP 708.02(b)(2). The current fee schedule is available at: www.uspto.gov/​learning-and-resources/​fees-and-payment/​uspto-fee-schedule.

The Track One Program does not have the restrictions of the COVID-19 Track One Program on the types of inventions for which special status may be sought, as the Track One Program does not require a connection to any particular technology. Moreover, delays associated with the determination of whether an application presents a claim that covers a product or process related to COVID-19 and whether the product or process was subject to an applicable FDA approval for COVID-19 use will be avoided under the Track One Program.

Andrew Hirshfeld,

Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.