USPTO to Provide a Deferred-Fee Provisional Patent Application Pilot ProgramSeptember 17, 2020

In yet another effort to encourage innovation to combat COVID-19, the United States Patent and Trademark Office recently announced a pilot program that attempts to expedite the protection and disclosure of innovations. The pilot program, titled “Deferred-Fee Provisional Patent Application Pilot Program and Collaboration Database to Encourage Inventions Related to COVID-19”, allows inventors to file a provisional application and defer payment of the associated filing fee for the application until the filing of a corresponding nonprovisional application. If a later-filed application is not pursued, but the applicant still wishes for participation in this program, the basic filing fee will not need to be paid.

The purpose of the pilot program is to provide a cost-effective way for inventors to disclose their ideas to others quickly, while maintaining their right to claim and protect the subject matter contained in the disclosure. It is hoped that the expedited filing and disclosure will help combat COVID-19 quicker by allowing the public to see and build upon the subject matter in the filed applications. As noted in the official USPTO notice, “Early public disclosure can facilitate collaborations, partnerships, or joint ventures, and, in turn, spur and expedite the development of critically needed technologies.”

There are a few caveats. First, an applicant must agree that the technical subject matter disclosed in the provisional application will be made available to the public via a searchable database on the USPTO’s website. Normally, provisional applications, including the subject matter contained therein, will not be published or viewable by the public.

In addition, the subject matter disclosed in the application must concern a product or process related to COVID-19, and such product or process must be subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use, whether such approval has been obtained, is pending, or will be sought prior to marketing the subject matter for COVID-19.

Should you have any questions surrounding this program or any other USPTO program, please consult an MVS attorney.

Luke T. Mohrhauser is a Patent Attorney and Co-Chair of the Mechanical and Electrical Practice Group at McKee, Voorhees & Sease, PLC.  For additional information please visit www.ipmvs.com or contact Luke directly via email at luke.mohrhauser@ipmvs.com.