Recently, the USPTO announced the COVID-19 deferred-fee provisional patent application pilot program.
Although they may be helpful for some, the current USPTO COVID-19 patent programs may not protect your patent application. Essentially, the USPTO will defer (not forgive) the filing fee for the provisional application filing for certain conditions. The fee would be collected later, at the time a non-provisional application is filed within 12 months. The invention is required to be COVID-related and also requires the invention eventually be submitted for approval by the FDA.
The only real catch is that you must give the USPTO the right to publish your provisional on their “COVID invention” webpage, which they say will spur more COVID innovation. Well, let’s stop for a moment and understand the ramifications of allowing the publication of your invention at the time of filing the provisional. Up until this initiative, provisional applications were never published, although they are downloadable from a file-wrapper for the non-provisional application once the non-provisional issues to a patent.
The problem is oftentimes the provisional is very preliminary, not fully designed, and modifications and improvements are almost always made to a non-provisional application filed from a provisional. So, if you allow your provisional to be published, your competitors as well as the general public will gain knowledge of your concept and easily build from it, creating their own product and file for a non-provisional patent before you. As long as the competitors’ modifications are of a level that overcomes what is shown in said provisional, they very well may achieve a patent before you based on your inventive concept. It will then be your burden to prove they gained the information from the USPTO Webpage, which is very difficult to do. Filing fees for filing a provisional application as of Oct. 2, 2020 are $75.00, $150.00, and $300.00 for micro-entity, small and undiscounted, respectively. The fees are relatively small and not worth deferring for up to 12 months, publishing the provisional and taking the risk.
To learn more about how to protect your invention, please download our Patent eGuide
