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USPTO Allows Petitions for Prioritized Examination of COVID-19 Trademark Applications

June 16, 2020

In an effort to help bring potentially life-saving COVID-19 treatments more quickly to market, the United States Patent and Trademark Office (USPTO) announced yesterday that it will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services beginning Tuesday, June 16, 2020. The USPTO will also waive the fees for these petitions under the “extraordinary situation” provision of 37 CFR §2.148. A copy of the USPTO announcement from Director Andrei Iancu can be found here.

To qualify for prioritized examination, the applicant must be seeking registration for one or more of the following goods or services:

  1. pharmaceutical products or medical services 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 (FDA); and

  2. medical services or medical research for the prevention, diagnosis, treatment of or cure for COVID-19.

The USPTO has established guidelines to determine what qualifies as “subject to approval” by the FDA, and applicants must fulfill certain requirements regarding how the prosecution is conducted at the USPTO. When filing the petition to accelerate examination, the petition must include a statement of facts, supported by affidavit or declaration under 37 CFR §2.20, setting forth the applicant’s COVID-19 medical goods or services. The petition must also set forth the section of the Code of Federal Regulations (CFR) under which the goods are regulated.

Additional requirements for participating  in the program are included in the Director’s announcement.

The USPTO plans to monitor the workload and effectiveness of the program, modifying or discontinuing it based on its findings.

As with any intellectual property asset, qualified counsel should be engaged for trademark prosecution before the USPTO to ensure strict adherence to the specific program requirements of this COVID-19 acceleration  program. Otherwise, valuable time, not to mention trademark and brand rights, could be lost in the process.

If you will be seeking registration of a mark for one of the identified COVID-19 goods or services, please contact Stephen Thomas or the attorney with whom you regularly consult at Lowndes.

For the latest COVID-19 updates and information, visit our Coronavirus (COVID-19) Resource Center.

This article is informational only. You should consult an attorney before acting or failing to act. The law may change rapidly and no warranty is given. LOWNDES DISCLAIMS ALL IMPLIED WARRANTIES AND WITHOUT LIMITATION, ANY WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE. ALL ARTICLES ARE PROVIDED AS IS AND WITH ALL FAULTS. Consult a Lowndes attorney if you wish to establish an attorney/client relationship.

A registered U.S. patent attorney and former engineer and program manager, Stephen Thomas is a shareholder in the firm’s Intellectual Property Group. In this role, he advises clients, many of whom have global IP portfolios and product placement, in a variety of markets.

Stephen provides his clients with a full spectrum of guidance regarding:

In addition, he is engaged in prosecuting numerous patent and trademark applications before the USPTO and actively manages foreign patent and trademark filings in numerous foreign jurisdictions including jurisdictions in North America, Europe, Asia, Africa, and South America.

Stephen has defended challenged patents under the Inter Partes Review (IPR) rules at the Patent Trial and Appeal Board (PTAB) as well as challenged and defended trademarks at the Trademark Trial and Appeal Board (TTAB).

An experienced litigator, Stephen has enforced intellectual property claims against Fortune 100 companies, as well as numerous general business and contract related matters, in both the Federal and state courts. He is also a frequent lecturer in IP and business matters for Central Florida business incubators, universities and other organizations.

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