Patents and trademarks: it’s a good time to file in the united states!

Geneviève Hallé-Désilets[1] and Rosalie Jetté [2]
ROBIC, L.L.P
Lawyers, Patent and Trademark Agent

The current context brings its share of challenges, but it can also be a source of great opportunities. Indeed, the COVID-19 crisis could be, for some companies, the ideal time to file a patent or trademark application in the United States thanks to the mechanisms and advantages currently available.

1. Patents

The U.S. Patent and Trademark Office (“USPTO”) announced on May 8 the launch of a new pilot project, the “COVID-19 Prioritized Examination Pilot Program” [3]. This program could save applicants substantial amounts of money and significantly reduce application processing times.

The pilot program consists of offering, without the fees normally associated with it, prioritized examination to certain patent applications filed by “small” or “micro-entities”.

In order to be eligible, the claim(s) in the application must cover a product or process intended for use in the prevention and/or treatment of COVID-19. This product or process must also be subject to one of the Food and Drug Administration (FDA) approvals the American equivalent of Health Canada – for COVID-19 use[4].

The objective of such prioritized examination is to provide the applicant with a final decision within approximately 12 months from the date a request for prioritized examination is granted. The USPTO estimates, however, that it would be able to make a final decision in as little as 6 months if the applicant provides timely responses to the Office’s notices and actions.

The notice [5] issued by the USPTO states that the pilot program will continue until it has accepted 500 applications. It may, however, extend duration of the the program or terminate it depending on its effectiveness and available resources.

Companies wishing to take advantage of this opportunity should therefore act quickly to benefit from the prioritized application and save time and money!

2. Trademarks
The USPTO and the Trademark Trial and Appeal Board (“TTAB”) are still functional and continue to receive documents and payment of fees.

However, due to the significant decrease in applications since the appearance of COVID-19, it would appear that the processing time for new trademark applications has decreased drastically.

Indeed, many applications reach the examination stage and proceed to registration in less than 3 months, which is less than half of the time applicants usually have to wait.

This is therefore a unique opportunity for trademark owners to quickly register their trademark in the United States and, thus, to ensure better protection of their product or service on the American market.

ROBIC’s team of professionals remains available to advise you on the best strategies to put forward your intellectual property assets and to support you in your efforts.