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TAKEAWAY: Applicants may delay payment of filing fees for provisional applications relating to products or processes to treat or prevent COVID-19.

As part of a continuing effort to ease the burdens of patent filings on applicants during the on-going pandemic, the USPTO announced on September 17, 2020, a new COVID-19 Deferred-fee Provisional Application Pilot Program. The program allows applicants to defer payment of the filing fee for a provisional application, without surcharge, until filing a non-provisional application claiming priority to the provisional application. If an applicant chooses not to file a non-provisional application within the one-year period for claiming priority, no fees are due.

In order to take advantage of the Pilot Program, the provisional application must concern a product or process subject to FDA approval for COVID-19 use. Such FDA approvals include, for example, an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA) for medical devices, and an Emergency Use Authorization (EUA).

Applicants are required to submit Pilot Program Form PTO/SB/452 to certify the provisional application is eligible. Notably, by filing the form, applicants authorize publication of the application in a searchable online public database. Publication may occur a few days after filing, or in some instances, several weeks after filing. Because provisional applications are normally not published at all, this is a significant difference that applicants should consider, particularly for prior art purposes outside the U.S. The provisional application must be in English and filed in DOCX format, although figures may be filed as a PDF.

This Pilot Program may be particularly well suited for small businesses looking to secure a priority date at a low cost point. Larger organizations, with more resources, may prefer to pay the filing fee and avoid publication.

Additional information regarding the Deferred-Fee Provisional Patent Application Pilot Program may be found at the USPTO website.