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Virus Collaborations Could Create Messy Patent Questions

May 11, 2020, 10:31 AM

Researchers’ sprint to collaborate on vaccines and treatments for Covid-19 may lead them to overlook precautions they normally would take to stake out ownership of intellectual property.

That may heighten the risk of fights between one-time partners over possibly lucrative discoveries once the pandemic subsides.

“When you’re doing things quickly in response to an emergency, all the problems you normally have in collaborations get worse,” said Liza Vertinsky, an Emory University law professor who researches patent and contract law.

The potential for intellectual property disputes highlight the need for collaborators to take proactive steps, attorneys said. Meticulous record-keeping, early legal scrutiny of collaboration boundaries and licensing terms, and customizing agreements to fit the goals at hand may help ward off potential disagreements.

The collaborations involving companies, governments, and research institutions built in response to the coronavirus outbreak have crossed public and private lines—and national borders.

The National Institutes of Health is coordinating with drug companies, including Pfizer Inc. and Johnson & Johnson, to push out new treatments and vaccines. Eli Lilly & Co. is working with Canadian biotech AbCellera to develop antibody products, while Oxford University has partnered with AstraZeneca plc.

The treatments, vaccines, and other inventions developed for Covid-19 could be highly valuable, and some new discoveries will have other uses. Medicines developed to treat Covid-19, for example, could later be used to fight other viral infections.

Pushing Thorny Issues

Feeling the need to act fast, some companies or institutions may be rushing into unfamiliar collaborations before working out a long-term plan for intellectual property. Or, they may put off decisions about ownership to a later date, not wanting to slow the process.

“That pushes some very thorny issues later on, when it can be very difficult to figure out,” Vertinsky said.

Gilead Sciences Inc.'s ongoing feud with the government, though unrelated to the coronavirus pandemic, highlights how collaborations can go wrong. The drugmaker sued the government in April, accusing it of breaking contracts and secretly filing for patents during their work on Truvada. Months earlier, the government filed a suit alleging Gilead infringed the patents and owed money.

In another ongoing case, a unit of Astellas Pharma claims two of its scientists should be named inventors on a stem-cell patent recently awarded to biotech company ImStem Biotechnology Inc.

Many companies and institutions have IP departments or technology offices capable of handling collaborations, attorneys said.

It’s important to utilize those resources at the outset, “even if it might be seen as slowing the process down,” said Steven Lendaris, chair of the life sciences IP practice group at Baker Botts LLP.

Patent Pledges

Other efforts to facilitate research and development include free licensing of technologies that could be useful in the pandemic. Several tech companies, including Microsoft Corp., IBM, and Intel Corp., as well as New Jersey Institute of Technology, have signed onto one initiative, the Open Covid Pledge.

Organizations that join the Open Covid Pledge, which was designed by a group of scientists and lawyers, promise free use of their intellectual property to fight Covid-19.

The pledge, and others like it, have been well received, but intellectual property rights could become tangled.

The license in the Open Covid Pledge ends shortly after the pandemic is over. So while researchers don’t have to worry about the participating organizations’ intellectual property now, those rights could be a factor later.

“I think the whole thing about the pledge is to try and not think about those more commercial aspects and company side of things—just come together to come up with a solution to a problem and figure the rest of it out afterwards,” said Richard LaCava, leader of Arent Fox LLP’s New York IP group.

Attorneys and legal scholars see the potential for disagreements about whether a particular use of intellectual property was within the scope of these licenses. And if companies start customizing free licenses, things have the potential to get messy, some said.

There are steps that companies accepting free licenses can take to mitigate potential risks. LaCava suggested scientists and engineers at those companies keep detailed notes and record the intellectual property that they are using from other companies during the crisis.

Efforts to collaborate and share can be a balancing act. But, as “complicated and difficult as the process can be, let’s not let it get in the way of results,” Shearman & Sterling LLP partner Emma Maconick said.

To contact the reporter on this story: Matthew Bultman in New York at mbultman@correspondent.bloomberglaw.com

To contact the editors responsible for this story: Roger Yu at ryu@bloomberglaw.com, Keith Perine at kperine@bloomberglaw.com

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