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Open COVID Pledge and Potential IP Issues

March 31, 2021 In Blog, COVID-19, Intellectual Property, Pharmaceuticals By Rachel Oleck

Open COVID Pledge and Potential IP Issues

The Open COVID Pledge is an initiative that was created in 2020 and has been aiming to pool information by calling on organizations from all over the world to make their intellectual property freely available in order to combat the COVID-19 pandemic.[1] The initiative began with an “international group of researchers, scientists, academics and lawyers seeking to accelerate the rapid development and deployment of diagnostics, vaccines, therapeutics, medical equipment, and software solutions in this urgent public health crisis.”[2] The Open COVID Pledge provides a mechanism for owners of patents and copyrights to freely share their IP assets in the fight against COVID-19, without partaking in negotiations or facing royalty payments.[3]

Specifically, companies making the pledge must publicly commit, in an announcement, that offers “nonexclusive, royalty-free, worldwide, fully paid-up license to the pledgor’s IP solely for the purpose of diagnosing, preventing, containing and treating COVID-19.”[4] The pledge to freely share this information would run until the earlier of one year after the World Health Organization declares the Covid-19 pandemic to have ended or by January 1, 2023.[5] There are three licensing options pledgors can choose from:

  • One of several standard Open COVID Licenses developed by the Coalition (OCL)
  • A public license compatible with the Pledge (e.g., CC BY 4.0, CC0 1.0 Public Domain Dedication, MIT license, Apache 2.0 license, CERN OHL Ver. 2 – Permissive (P)) or a custom license that contains the minimum terms required by the Pledge.
  • An alternative license that is consistent with the Pledge but may not contain all of the required terms (e.g., CC BY-SA, GPL, CERN OHL Ver. 2 – Strongly Reciprocal (S)).[6]

Further, the Open COVID Licenses (OCLs) were created by the pledge organizers and early pledgors and contain these four elements:

  1. Grant of a worldwide, limited-term, royalty-free license to their IP rights (including patents and copyrights but excluding trademarks and trade secrets) for the purpose of diagnosing, preventing, containing and treating COVID-19.
  2. License term begins on December 1, 2019, and ends one year past a World Health Organization (WHO) declaration of the end of the COVID-19 pandemic, or in some license versions, the earlier of that date or January 1, 2023.
  3. Licensor cannot assert regulatory exclusivity in its licensed IP.
  4. Licensee cannot sublicense IP.[7]

As for compatible licenses, pledgors of the Open COVID Pledge can create a custom license that must contain at least one of the following: “a public offer of a license that can be accepted by anyone, no royalty fees, grant of one or more IP rights (other than trademarks and trade secrets), no assertion of regulatory exclusivity, and a duration similar to the OCLs. While the granting of broader permissions than those of the model OCL are permitted, narrowing of permissions is not allowed.”[8] Terms that do not abide by compatible license requirements can be admitted as an alternative license.[9]

The Open COVID Pledge aims to remove the unnecessary obstacles that occur to disperse protected information in an effort to save lives and limit suffering. While cooperation and information dissemination are essential for combatting COVID-19, there are important potential issues that companies that own IP assets should be aware of to avoid litigation and controversies in the future.[10] This pledge should not be taken lightly, and companies must “do their due diligence before pledging or using pledged IP.”[11] This will include companies implementing measures to track the use of licensed IP.[12] For the licensor, tracking the use of the licensed IP will aid in license complaints during the term of the license.[13] While for licensees, tracking can assist in preventing “inadvertent incorporation of the licensed IP into the licensee’s other products or services.”[14]

IP owners must consider the balance of data sharing and technology with their finances and potential legal issues that could arise from participation in the Open COVID Pledge.[15] IP owners should ensure they are permitted to contribute this IP to the pledge (and that it is not subject to existing contractual obligations).[16] The owner should identify what IP they want to pledge and ensure that which must remain proprietary and confidential is kept protected.[17] The owner should also ensure the patent portfolio relating to the IP is updated regularly and good recordkeeping is continued.[18]

Finally, respective parties involved in the pledge should be aware of their rights after the pandemic is over and avoid potential legal battles.[19]

Footnotes[+]

Rachel Oleck

Rachel Oleck is a third-year J.D. candidate at Fordham University School of Law and a staff member of the Intellectual Property, Media & Entertainment Law Journal. She holds a B.A. in Political Science from Boston University.