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Virus Researchers Race to File Patents Ahead of Research Reveal

May 15, 2020, 10:30 AM

Life sciences companies and researchers are accelerating their patent applications, hoping to lay claim to their coronavirus-related discoveries before falling behind a tidal wave of information.

Scientists have published a cascade of coronavirus research, as part of a push to share ideas that could help end the pandemic. The attention on the health crisis and information sharing could make patenting Covid-19 treatments difficult, and create thorny legal questions about what inventions are obvious.

Some companies have sped up the filing of patent applications in response, to stay ahead of information disclosures that could make their discoveries unpatentable, attorneys say. Patent filings can normally take weeks, or even months, but some are being done in a matter of days, they say.

“It’s a high priority to get these filings out ahead of time,” said Steve Lendaris, chair of the life sciences IP practice group at Baker Botts LLP.

U.S. patent applications generally aren’t published until 18 months after their filing date, making it difficult to evaluate recent filing activity. The Patent and Trademark Office declined to comment.

But attorneys who work with life science companies say many of their clients are already filing patent applications. “Most companies, even the smaller ones, understand the value of patents,” said Gaby Longsworth, a director at Sterne Kessler Goldstein & Fox PLLC.

Patentability Issues

A free database, Cord-19, whose collaborators include Microsoft Corp. and the Chan Zuckerberg Initiative, has more than 63,000 scholarly articles about the virus. AUTM, a nonprofit organization whose members work in university technology transfer offices, has a website where government and academic research can be shared. Artificial intelligence is also being used to collect research.

“Researchers have worked tirelessly to generate an unprecedented amount of knowledge since the start of the outbreak,” Robert Kiley, head of open research at the U.K. non-profit Wellcome, said in a recent statement announcing that more than two dozen publishers would make Covid-19 content freely available.

The steady flow of information could create hurdles for some companies hoping to patent their discoveries. When deciding whether an invention is not new or is obvious, patent examiners look at what was known at the time of the invention.

Inventions that are anticipated, or made obvious, by publicly available information cannot be patented. The patent office and courts can use similar considerations when evaluating challenges to issued patents.

“Whenever you have a lot of information entering the public domain, you inevitably are going to have patentability issues for anyone who is trying to bank on that,” said Yaniv Heled, a law professor at Georgia State University.

Those issues can be particularly acute for companies seeking patents on Covid-19 treatments, attorneys say. Protecting intellectual property related to diagnostic testing has been a challenge for years, following a 2012 U.S. Supreme Court decision.

The justices in Mayo v. Prometheus limited the patenting of such tests when they ruled that patent claims merely covering a natural law aren’t eligible for patenting.

Messy Box

A potential race to the patent office can result in patents being filed on inventions that might not yet be fully understood.

Along with the sharing of research, the pandemic has spurred collaborations between companies, universities, and governments, including some partnerships involving researchers with different technology backgrounds.

The variety of collaborations, combined with the pace of innovation, could make it difficult for judges in future patent disputes to determine what a skilled researcher would have known - and whether an invention was obvious.

It’s not as “neat of a legal box,” said Polsinelli PC principal Darren Donnelly. He suggested there “will be challenging questions down the road as to what the effect of prior art is.”

Advances To Old Medicines

Science’s focus on solving the virus could raise another issue for patenting treatments.

Much of the research into Covid-19 treatments has involved existing drugs, including Gilead Science Inc.’s remdesivir. The antiviral drug, which is being shipped to hospitals around the world, was initially developed for hepatitis C and also previously studied to treat Ebola outbreaks in 2014.

A new use for an existing medication may be patentable. In a recent academic paper on the topic, Vanderbilt University chemistry and law professor Sean Seymore used the example of aspirin, which Bayer patented in 1900.

“Aspirin - the product, acetylsalicylic acid - is no longer patentable; however, new use patents for aspirin abound (e.g., a method of treating acne using aspirin, etc.),” Seymore wrote in an email.

But with the world’s attention focused on solving the pandemic, it may be harder to get patents on methods of treating Covid-19 with an old drug. Some patent attorneys say it is obvious for researchers to screen any existing chemical compounds now in search of a treatment.

“At this point everyone is dedicating whatever efforts they have to try everything with Covid,” Heled said. Arguably, there are “no surprising and unexpected results. Everyone is expecting surprising and unexpected results.”

For additional legal resources, visit Bloomberg Law In Focus: Coronavirus (Bloomberg Law Subscription)

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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