The U.S. Patent and Trademark Office (USPTO) recently announced a new COVID-19 prioritized examination program for certain trademark and service mark applications. It is available for products that are subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19 and for medical or medical research service for the prevention and/or treatment of COVID-19.

“Inventors and entrepreneurs are working around the clock to develop products that will help prevent, diagnose, treat, or cure COVID-19,” Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO said in a press statement. “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.”

Eligibility for this Prioritized Examination Program

Typically, the USPTO examines trademark applications in the order that they are received. However, there are procedures where an applicant may request that the initial application be advanced out of turn when special circumstances exist. Under 37 C.F.R. § 2.146(a)(3), an applicant may 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 outbreak, the USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services. Additionally, the agency will waive the fee for such petitions.

As set forth in the USPTO Notice, to qualify for fast-track examination, goods and services must consist of: (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”; or (ii) “medical services or medical research for the prevention, diagnosis, treatment of, or cure for COVID-19.”

The FDA approvals for the pharmaceutical products or medical devices may include an Investigational New Drug application, an Investigational Device Exemption, a New Drug Application, a Biologics License Application, a Premarket Approval, or an Emergency Use Authorization.

How to Take Advantage of Accelerated Trademark Examination

Our attorneys can assist trademark applicants with this process.  To seek expedited examination, applicants must first file a trademark application. The next step is to file a petition to the Director that includes the newly assigned application serial number. The application and petition must be filed through the Trademark Electronic Application System (TEAS). The petition 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 USPTO began accepting petitions for fast-track examination on June 16, 2020. According to the USPTO, it plans to monitor the workload and resources needed to administer the program, and the effectiveness of the program. If the USPTO determines that modifications are needed or decides that it will no longer grant petitions for prioritized examination, it will notify the public before taking action.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.