(This podcast episode first aired in 2021. This program is no longer available.)
Another COVID-Related Program from the USPTO
This episode is about another special program the USPTO has set up for COVID-related applications. In the last episode, I talked about how to get your application put at the front of the line for examination if your application is COVID-related. But that can be pretty hard to do because it has to be subject to some kind of FDA regulation—and even if you have something that might be COVID-related, like a new hand sanitizer, it might not qualify because it’s not going through any kind of FDA approval.
There’s another program that you might be interested in, and it’s called the Deferred-Fee Provisional Patent Application Pilot Program.
How Much Money Are You Actually Saving?
To be honest, this is probably only going to save you $75 or $150, because it allows you to defer payment of the provisional patent application filing fee until you file your non-provisional application.
If you’re not familiar with the differences between provisional and non-provisional applications, go back to my earlier provisional episodes—but basically, a provisional application is a low-cost filing that allows you to get an early filing date for up to 12 months before you file your real or non-provisional patent application.
The filing fees are either $75 if you are a micro entity, which generally means an individual making less than $206,000 currently, or $150 if you make more than that. There are other rules about what you have to pay, but that’s generally how it works. If you’re a large company—over 500 people—the fee would be $300, but odds are that doesn’t apply to you. And if you are a company of over 500 people, you’re probably not too worried about saving $300.
What Does the Program Do?
What this pilot program does is allow you to submit a provisional application designed to combat COVID-19 without having to pay the filing fee upfront. You defer that payment until you file your regular (non-provisional) patent application.
The program started on September 17, 2020, and was scheduled to run for 12 months, meaning it was set to end on September 17, 2021. It’s possible it could be extended, so check the USPTO website for updates.
Conditions and Requirements
So what’s the catch, besides being COVID-19 related?
One major requirement is that you must agree to make the technical material disclosed in your provisional application publicly available via a searchable collaboration database. Normally, provisional applications are not publicly available, so you can file a provisional application and no one will know about it. But if you go through this program, they’re going to make it publicly available.
Also, just like the other program I discussed in the last episode, the product or process must be subject to an applicable FDA approval for COVID-19 use, whether that approval is already pending or will be sought prior to marketing.
How to Apply
There is a form you need to fill out, called PTO/SB/452, to request inclusion in the pilot program.
You must include a technical disclosure, a cover sheet, and everything must be submitted in DOCX format. (I usually prefer to submit things in PDF, but the patent office is really trying to encourage DOCX submissions now, and if you want to do this program, you have to use DOCX.)
When you submit the application and are selecting the type of document description, upload the form and select the description that says “COVID-19 Collab Database Request for Provisional Application” under the Pilot Programs category.
Final Thoughts
Honestly, because of the requirement that the invention be subject to FDA approval, and considering you’re really only saving—or rather deferring—$75 or $150, it’s not a huge deal if you don’t do this program.
At worst, you’re out $75 or $150 because you didn’t know about the program. At best, you’ve simply deferred payment of $75 or $150—not avoided it entirely. So now at least you know this program exists. I’m not sure how useful it will be to you, but in the words of G.I. Joe: knowing is half the battle.
I’m Adam Diament, and until next time, keep on inventing.