Partner Steve Maebius was quoted in the Pink Sheet article, “Small Biotech Companies Could Get Faster USPTO Review Of COVID-19 Patent Applications,” about a United States Patent & Trademark Office pilot program which aims to fast track patent applications for small biopharma companies for COVID-19 products that are subject to FDA approval.
Maebius told Pink Sheet that the program is meaningful for small biotech companies as each new patent grant can be particularly valuable to them and show investors they have a good path forward.
"It's not earth shaking in terms of its impact but it's a nice extra tool for small entity life sciences companies who are innovators in areas related to COVID-19," he said. For a pre-revenue company, it can be quite significant to get a patent issued quickly, and if you have no other product on the market "it can be a game changer."
Maebius pointed out that companies need to consider that if they get priority examination they may not get patent term adjustment, which is given to make up for delays in getting a patent issued. While companies can't control whether they get a patent term adjustment it can be valuable and is sometimes worth holding out for, he said.
He also noted that companies who license their patents to a big pharma company do not qualify for small entity status to get reduced fees.
Prioritized examination can shave a year or more off the examination time. According to the USPTO, as of March, the traditional total pendency was 23.5 months. Maebius said examination ranges from about 18 months to as long as three years and in some cases longer depending on the subject matter and the patent examiner assigned the application as some examiners have more applications on their docket. He noted that the nature of the application is also a factor since broad pioneering inventions may have broader claims and more issues to address.