The USPTO announced on May 8, 2020 that it is waiving the fee it normally charges for prioritized examination of new applications, provided that the application is filed by a small or micro entity and covers a product or process subject to FDA approval for use in the prevention and/or treatment of COVID-19.
As background, at the time of filing a new application, any applicant can request prioritized examination for the application, in any area of technology, on payment of a fee. The fee varies based on the status of the applicant; currently the fee structure is $4000 for an undiscounted entity, $2000 for a small entity, and $1000 for a micro entity. Qualifications for small and micro entity status are defined at 37 C.F.R. § 1.27 and § 1.29. Generally speaking, applicants qualify as a small entity if they are individuals or nonprofits or businesses with fewer than 500 employees and if they also are not under an obligation to assign to a large entity. Micro entities must additionally satisfy some limits on gross income.
With this new USPTO announcement, the fee for requesting prioritized examination is waived. Other filing fees are not waived, resulting in the following fees for filing of qualifying new applications:
|Basic filing fee
|Utility search fee
USPTO has also designated a form (not yet available at its website) for use in requesting the waiver: PTO/SB/450, "Certification and Request for COVID-19 Prioritized Examination Pilot Program under 37 CFR l.102(e)."
Update May 15, 2020: Form PTO/SB/450 is now available at https://www.uspto.gov/sites/default/files/documents/sb0450.pdf
There are a few other formal requirements, such as limitations on the number of priority claims, and interested applicants should seek advice from qualified patent attorneys before deciding to seek the fee waiver.
The goal in any prioritized application is a final disposition within 12 months, and the USPTO believes that quick action by the applicant can shorten pendency even further, perhaps down to 6 months.
For nonprioritized applications that have already been filed, but qualify otherwise, it might be beneficial in some circumstances to re-file the application as a continuation together with a request for participation. Again, interested applicants should seek advice from qualified patent attorneys before deciding.
It should be noted that, given the requirement for FDA approval, any patent granted pursuant to this program might also be eligible for patent term extension beyond the normal 20-year period, depending on approval delays at the FDA.