Intellectual property rights are – by definition – monopolistic. How, then, can researchers, charities and NGOs collaborate with business in the development of new technologies to control and eradicate COVID-19?
The Open COVID Pledge is intended to encourage business and academia to pledge to make their intellectual property (IP) available free of charge for use in ending the COVID-19 pandemic and minimising the impact of the disease. The Pledge was developed by the Open COVID Coalition, an international group of scientists and lawyers who seek to accelerate the rapid development and deployment of diagnostics, vaccines, therapeutics, medical equipment and software solutions.
There are two ways of getting involved with the Pledge, namely “Support” and “Make”.
Supporting the Pledge – an expression of institutional support without legal obligation.
Making the Pledge – a promise to make some or all of its IP available for use in the fight against COVID-19.
If an organisation decides to “Make the Pledge” it should make a public statement to this effect on its website, issue an office press release, and notify the Open COVID Coalition. It must also publish a licence which sets out the terms and conditions on which such IP is made available.
In Making the Pledge in this way, the IP owner makes a binding promise which contains the grant of a license. In other words, the pledgor gives permission to others to rely on its promise (its Pledge) with legal force, notwithstanding the absence of a written contract, and to start to make and sell their own products based on the pledgor’s IP.
Companies such as Amazon, Facebook, Hewlett Packard Enterprise, IBM, Microsoft, Sandia National Laboratories and Uber have all Made the Pledge.
The IP owner must either (a) adopt one of three standard Open COVID Licenses (selecting the appropriate version depending on whether the licence should cover patents and copyright or just patents, and how long it should last), or (b) issue custom licence terms which must be at least as permissive as the Open COVID Licenses. In either case, no financial charge can be imposed, whatsoever.
The standard Open COVID Licenses grant the right to make, use, sell and otherwise exploit the IP in the fight against COVID-19. This includes, without limitation, diagnostics, vaccines, therapeutics and medical equipment. The license is simply a grant of legal rights. The licence terms do not require the pledgor to provide materials, cell lines, prototypes, designs, plans, data, trial results, software or anything else, nor do they require any cooperation, training, technical assistance or consultation by the pledgor, or reporting or consultation by the licensee. It is open to the parties to negotiate a fuller cooperative arrangement (which can include compensation) if desired.
No Grant Back of Rights
It should be noted that the licence granted under the Open COVID Licenses is one-way. There is no licence-back of rights to the IP owner. The Open COVID Coalition state that, whilst this may seem imbalanced, unfair and inequitable, they believe it to be the best way of achieving the greatest adoption of the licence on a global basis.
No right to subcontract
Sublicensing is not permitted under the terms of the license. This is to ensure that all rights flow from the original IP holder and establishes a direct relationship between the IP holder and the user of the IP rights for purposes of enforcement, defensive suspension and other purposes.
IP rights holders need to decide if they are licensing patents alone, or with copyright; they then simply need to consider what form of licence they want to use (or whether they need to prepare their own compatible form of licence), and notify the Open COVID Coalition so that their participation can be recorded and publicised.
IP rights holders that want to make the Pledge do not need to identify the specific IP that could be used, as the standard licences do not seem to require this. Before committing themselves to the Pledge, however, we would recommend that IP owners should check that the grant of licences under the Pledge will not breach any exclusivity obligations which may be owed to existing IP licensees. If there is a need to restrict which IP is covered by the Pledge, then a custom form of licence will need to be used.