Updates
June 26, 2020

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.

We encourage our clients to contact Polsinelli to determine if a proposed trademark or service mark application covering eligible goods and services qualifies for the Prioritized Examination Program. Please send any inquiries to the attorney with whom you usually correspond and we will make sure one of our trademark professionals responds promptly.