deferred-fee provisional
patent application pilot
program for
COVID-19 inventions
The USPTO implemented a deferred-fee provisional patent application pilot program and collaboration database to promote the expedited exchange of information about inventions designed to combat COVID-19 on September 17, 2020. Under this program, the USPTO permits applicants to defer payment of the provisional application filing fee until the filing of a corresponding nonprovisional application. In turn, applicants agree that the technical subject matter disclosed in their provisional applications will be made available to the public via a searchable collaboration database maintained on the USPTO’s website.
The pilot program will no longer accept certifications and requests effective at midnight September 17, 2021.
The pilot program description:
- Under this program, the USPTO permits successful applicants to defer payment of the provisional application filing fee until the filing of a corresponding nonprovisional application.
- Applicants agree that the technical subject matter disclosed in their provisional applications will be made available to the public via a searchable collaboration database maintained on the USPTO’s website.
- The subject matter disclosed in the provisional application concerns a product or process related to COVID-19.
- Such product or process is subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use, whether such approval was obtained, is pending, or will be sought prior to marketing the subject matter for COVID-19.
- Applicants used Pilot Program Form PTO/SB/452 to request participation in the pilot.
- Provisional applications accepted into this pilot:
- included a technical disclosure
- included a provisional application cover sheet
- were submitted as DOCX format via the Patent Center
- included a certification and request to participate in the program (form PTO/SB/452) with the Patent Center filing.
Filers
- Filled out Pilot Program form PTO/SB/452 (Certification and Request for COVID-19 Provisional Patent Application Program).
- Saved the form and uploaded it via the Patent Center along with the provisional application including all required parts.
- Selected the document description “COVID-19 Collab Database Request for Prov Appl” (found under “Pilot Programs” category) on the Patent Center Attach Documents screen to ensure processing.
Announcements
- Federal Register notice 85 Fed. Reg. 58038 (Sept. 17, 2020)
- USPTO announces deferred-fee provisional patent application pilot program and collaboration database to encourage inventions related to COVID-19 (Sept. 16, 2020)
Public Comments
Questions and Answers
1 When is the pilot effective?
2 How long will the pilot last?
3 May I file a request in a previously filed provisional application?
4 How do I file a request for the pilot program?
5 What does “subject to an applicable FDA approval for COVID-19 use” mean?
6 My invention would not require FDA approval to commercialize or is not directed to a COVID-19 use. Can I still request participation in the pilot?
7 Can a non-discounted entity file a request under the pilot?
8 I filed a request under the pilot but now want the Office to remove my application from the pilot, what can I do?
9 Will the Office notify me about paying the filing fee for the provisional application prior to 12 months from the provisional application filing date?
10 If the filing fee increases after the application’s filing date and prior to payment, which filing fee is due?
11 Can I claim the benefit to a provisional application filed under the pilot program when I file a U.S. nonprovisional application, or claim priority when I file an international or foreign application?
12 I unintentionally failed to file a nonprovisional application within 12 months of the provisional application filed under the pilot. What can I do to claim benefit of the prior provisional application?
13 Will I have to pay the surcharge under 37 CFR 1.16(g) for failing to pay the filing fee on the filing date, if accepted into the pilot program?
14 If, after an initial positive determination during the preexamination process, the Office reconsiders whether a submission qualifies for the pilot and determines that a request is not eligible for the pilot program, how will the Office treat the submission?
15 What happens if I forgot to file the cover sheet or another requirement for a provisional application?
16 Are there examples exploring the prior art implications of participating in the pilot?
These facts apply to all four scenarios below: Tom and Jane work together to invent a new drug for treating COVID-19. They prepare a provisional patent application, including a cover sheet that names themselves as joint inventors. The technical disclosure of the provisional patent application complies with 35 U.S.C. 112(a), describing and enabling a two-component drug AB, as well as a method of using drug AB to treat COVID-19. Tom and Jane use form PTO/SB/452 to submit the application to the program via EFS-Web on September 17, 2020. The Office assigns a provisional application number to the papers filed as a provisional application and informs Tom and Jane that the filing date of their provisional application is September 17, 2020. The technical disclosure of the application becomes available to the public when it is posted to the program database on October 7, 2020.
Scenario 1: Twelve months after the filing date of their provisional application, on September 17, 2021, Tom and Jane pay the basic filing fee for their provisional application and file a nonprovisional application naming themselves as joint inventors and claiming the benefit of the provisional application under 35 U.S.C. 119(e). The nonprovisional application includes one claim drawn to drug AB and another claim drawn to a method of using drug AB to treat COVID-19. Both claims are supported by the provisional application. The technical disclosure is not prior art to the claims in the nonprovisional application because the effective filing date of the claimed inventions, which is the provisional application filing date of September 17, 2020, is prior to the date (October 7, 2020) the technical disclosure was made public.
Scenario 2: Tom and Jane pay the basic filing fee for their provisional application not later than September 17, 2021. On September 27, 2021, Tom and Jane file a nonprovisional application that names themselves as joint inventors and includes one claim drawn to drug AB and another claim drawn to a method of using drug AB to treat COVID-19. Both claims are supported by the provisional application. They attempt to claim benefit of the provisional application under 35 U.S.C. 119(e). The benefit claim is not effective because the nonprovisional application was not filed within 12 months of the provisional application. Tom and Jane have not sought to restore the right to claim benefit of the provisional application with a petition under 37 CFR 1.78(b). Thus, the effective filing date of all claimed inventions is September 27, 2021. Even though the benefit claim is not effective, the technical disclosure, published on October 7, 2020, is not prior art to the claims in the nonprovisional application. The prior art exception of 35 U.S.C. 102(b)(1)(A) applies because the technical disclosure was made by the inventor (Tom and Jane), and was made within the one-year grace period preceding the effective filing date of the claimed inventions.
Scenario 3: Matt sees Tom and Jane’s technical disclosure in the program database and collaborates with them to invent drug ABC as well as a method of using it for the treatment of COVID-19. Drug ABC is a variant of Tom and Jane’s drug AB. On September 17, 2021, which is 12 months after the filing date of Tom and Jane’s provisional application, Tom and Jane pay the basic filing fee for their provisional application. Also on September 17, 2021, Tom, Jane, and Matt file a nonprovisional application naming themselves as joint inventors and claiming benefit of Tom and Jane’s provisional application under 35 U.S.C. 119(e). The nonprovisional application includes separate claims drawn to drug AB and to drug ABC, as well as separate claims drawn to methods of using drug AB and drug ABC to treat COVID-19. The two claims concerning drug AB have an effective filing date of September 17, 2020 because the claims are supported by the provisional application. The two claims concerning drug ABC have an effective filing date of September 17, 2021 because they claim subject matter that was newly added in the nonprovisional application. The technical disclosure, published on October 7, 2020, is not prior art to the claims concerning drug AB because the publication date is not prior to the effective filing date of those claimed inventions, which is the provisional application filing date of September 17, 2020. The technical disclosure is also not prior art to the claims concerning drug ABC. The prior art exception of 35 U.S.C. 102(b)(1)(A) applies because the technical disclosure was made by “the inventor or joint inventor” of the claimed inventions. In accordance with 35 U.S.C. 100(f), the term “inventor” in 35 U.S.C. 102(b)(1)(A) means the inventive entity which is all named joint inventors (Matt, Tom, and Jane). In this example, the technical disclosure was made by Tom and Jane within the one-year grace period preceding the effective filing date of the claimed inventions concerning drug ABC. Tom and Jane are joint inventors of the claims concerning drug ABC along with Matt. Although Matt is not named as a joint inventor of the technical disclosure, the prior art exception applies because the October 7, 2020 publication is a disclosure made by joint inventors Tom and Jane of subject matter that they invented.
Scenario 4: Tom and Jane pay the basic filing fee for their provisional application not later than September 17, 2021. Acting independently with no input from Tom, Jane invents drug ABD as well as a method of using it for the treatment of COVID-19. Drug ABD is a variant of Tom and Jane’s drug AB. On September 17, 2021, Jane files a nonprovisional application naming herself as inventor and claiming benefit of the earlier filed provisional application under 35 U.S.C. 119(e). The nonprovisional application includes claims drawn to drug ABD and to a method of using drug ABD to treat COVID-19. Jane’s claims concerning drug ABD have an effective filing date of September 17, 2021, because those claims contain subject matter that is not supported by Tom and Jane’s provisional application. The technical disclosure regarding drug AB that was published on October 7, 2020, qualifies as prior art against Jane’s claims concerning drug ABD and could be cited in an obviousness rejection under 35 U.S.C. 103. The prior art exception of 35 U.S.C. 102(b)(1)(A) does not apply because the technical disclosure was not made by “the inventor or joint inventor” of the claimed inventions, which is required by 35 U.S.C. 102(b)(1)(A). In other words, Jane alone is “the inventor or joint inventor” of the claimed inventions; Tom is not a joint inventor of those claimed inventions but is named as a joint inventor in the technical disclosure. The technical disclosure was not made by the inventor (Jane) of the claimed inventions because the technical disclosure is not solely attributable to her.
Contact us
For questions about EFS-Web or the PAIR system, please contact the Patent Electronic Business Center at 866-217-9197.
For questions regarding the deferred-fee provisional patent application pilot program and collaboration database to encourage inventions related to COVID-19 Federal Register notice, please contact either Robert Clarke at 571-272-7735 or Kathleen Kahler Fonda at 571-272-7754 or via email to Covid19ProvisionalApplication@uspto.gov.