08/07/2020 by Jane D. Tucker, Esq.
In response to the COVID-19 outbreak, and the need to quickly develop medical products and services to fight the virus, the United States Patent and Trademark Office (“USPTO”) is allowing the trademark examination process for marks used to identify qualifying COVID-19 medical products and services to be expedited. This program expedites the review of qualifying applications by two months. The USPTO will also waive the filing fee normally charged by the USPTO for filing petitions to expedite the examination process.
In order to receive the expedited examination, the following must be done:
- File an application for registration of a mark for the following types of goods or services:
- 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; and
- medical services or medical research services for the prevention, diagnosis, treatment of, or cure for COVID-19.
- After filing the application, then file a Petition with the Director of the USPTO requesting that the Director exercise supervisory authority to advance the initial examination of the application out of its regular order.
This should be done using the Trademark Electronic Application System (“TEAS”) form entitled “TEAS Petition to Director”. In Section 3 of the form select the reason entitled “Request prioritized examination for COVID-19 medical-related goods/services”. Then in the “Attach Evidence” section, describe the types of medical goods or services related to COVID-19 and an explanation of why the goods and services are of a type that qualify for prioritized examination. The petition must also include the section of the Code of Federal Regulations (CFR) under which the goods are regulated.
- The $100 fee charged by the USPTO for filing a Petition to Director will be waived if the reason entitled “Request prioritized examination for COVID-19 medical-related goods/services” is checked on the Petition.
If the Petition is granted, the application will be assigned immediately to an examining attorney for review, which will expedite examination by approximately two months. The application will be subject to the normal examination process following assignment to an examining attorney, including publication of the application in the Trademark Official Gazette and the following 30-day period during which the public can file an opposition to the application.
About the Author:
Jane Tucker is an attorney in the firm’s Business Department. Jane concentrates her practice in intellectual property law, commercial business and real estate transactions, community association law, ERISA and employee benefits matters, and creditors’ rights law. She has earned recognition for her achievements as one of Virginia’s Business’s Legal Elite and Coastal Virginia’s Top Lawyers.
Jane’s ERISA and employee benefits practice concentrates on qualified retirement plans and welfare benefits, particularly in the areas of COBRA, USERRA, and qualified domestic relations orders, with an emphasis on multi-employer plans. For more information, please contact Jane at firstname.lastname@example.org.