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COVID-19 Update – Prioritized Examination Program for Certain Trademark Applications at the United States Patent and Trademark Office

Recently the United States Patent and Trademark Office (USPTO) announced a new prioritized examination program for trademark and service mark applications meeting certain requirements. The program allows applicants to petition for expedited review of federal trademark applications used in connection with qualifying medical products and services. While USPTO standard procedure is to examine applications as they are received, this program allows applicants to request a prioritized review of their application out of turn in specific circumstances. 

The USPTO rolled out this program in light of the COVID-19 outbreak to facilitate moving trademarks for medical products and services designed to combat the virus to market as soon as possible. In addition to accepting petitions from applicants seeking to take advantage of this program, the USPTO will waive the fee usually required with such petitions, as the USPTO believes the COVID-19 pandemic to be an “extraordinary situation”.

In order to be eligible for prioritized examination, the application in question must cover one or more of the following categories of COVID-19 medical goods and/or services:

  • Pharmaceutical products or medical devices such as diagnostic tests, ventilators, and personal protective equipment (also known as PPE), including surgical masks, face shields, gowns, and gloves that prevent, diagnose, treat or cure COVID-19 and are subject to approval by the U.S. Food and Drug Administration; and

  • Medical services or medical research services for the prevention, diagnosis, treatment of, or cure for COVID-19

The approvals referenced above in the first bullet point can include, but are not limited to an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), or Emergency Use Authorization (EUA), to name a few.

If the petition for prioritized examination is granted, the application will be promptly assigned to an examiner, which can help reduce the examination period by up to two months. The applicant can further expedite the process by promptly responding to Office Actions or any other inquiries issued by the USPTO. The prioritized examination process does not shorten or bypass the 30-day publication period for opposition. 

In order to take advantage of prioritized examination, the applicant must first file an application, then file a Petition to the Director that includes: 1) the application serial number; 2) a statement elaborating on the applicant’s COVID-19 medical goods or services; 3) an explanation of why the goods or services qualify for prioritized examination (including the CFR section under which the goods are regulated); and 4) an affidavit or declaration under 37 CFR § 2.20 supporting the applicant’s statement.

You can review the USPTO official notice at https://www.uspto.gov/sites/default/files/documents/TM-COVID-19-Prioritized-Examination.pdf.

© Polsinelli PC, Polsinelli LLP in CaliforniaNational Law Review, Volume X, Number 178

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About this Author

Laila Wolfgram Intellectual Property Lawyer Polsinelli Law Firm
Of Counsel

Laila advises clients on intellectual property law, with a focus on the selection and protection of trademarks, service marks and trade dress domestically and internationally. As a trusted advisor to clients, she assists clients in obtaining federal trademark registrations for a variety of marks, including non-traditional trademarks, such as colors.

Laila has represented numerous clients before the Trademark Trial and Appeal board and has experience with Uniform Domain-Name-Dispute-Resolution proceedings and due diligence for intellectual property matters in corporate transactions....

314.552.6840
Matthew J. Smith, Polsinelli, Patent Licensing Lawyer, Portfolio Determinations Attorney
Shareholder

Matthew Smith is passionate about helping clients protect their intellectual property. He concentrates his practice on providing clients counsel across a wide spectrum of issues, including:

•    Licensing

•    Custom software development

•    Hosting

•    Consulting

•    Procurement

•    Intellectual property joint development ventures

•    E-business and intellectual property matters

•    Copyright and trademark clearance and protection

•    Consulting and related agreements

314.552.6879