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Alert

The Open COVID Pledge – Don’t Say “I Do” Till You Think It Through

Companies must do their due diligence before pledging or using pledged IP.

By Michael S. Horikawa

Alert

By Michael S. Horikawa

Takeaways

Companies need to consider future entanglements created by letting others use their IP under the Open COVID Pledge.
Companies using IP under the Open COVID Pledge need to think about compliance and next steps once the pledge ends.
Companies need to assess whether IP pledges make sense or if there are other ways to contribute to stopping the pandemic.

06.24.20

We are still facing a global pandemic, yet we can take a measure of hope in the way COVID-19 has brought people and companies together to find solutions to this urgent crisis. One inspiring example of this collaborative effort is the Open COVID Pledge, created the Open COVID Coalition, which “calls on organizations around the world to make their patents and copyrights freely available in the fight against the COVID-19 pandemic.” The Coalition consists of an international group of scientists and lawyers, including notable IP scholars such as Profs. Mark Lemley and Jorge Contreras.

The Open COVID License

Companies that decide to make the Pledge must make a public announcement to that effect and generally offer a 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, until the earlier of one year after the World Health Organization declares the COVID-19 pandemic to have ended or January 1, 2023. The Open COVID Pledge accepts three categories of licenses:

  • 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)).

As reflected in the above examples, there is some flexibility in nature and scope of the license that may be used. For companies interested in using IP offered under the Pledge, it is important to note that such IP may be covered by a number of different licenses and that each license should be reviewed separately. As such, companies using pledged IP will need to have mechanisms in place to ensure compliance with all applicable licenses.

Is the Pledge Right for Your Company?

Once a company has decided to pledge its IP, any patents that are pledged will be added to a freely searchable database of pledged patents. According to the Coalition, the number of pledged patents now numbers over 250,000 and:

… covers a broad range of equipment, software, network and device applications useful in health care, containment, tracking, diagnostics, emergency response and social distancing. It includes 3D-printed respirators, touch screens that use ultraviolet light to prevent the spread of infection, a Wi-Fi enabled floating hospital, methods for designing grocery stores to ensure social distancing, a low-cost, single-use ventilator, software for accelerating disease diagnosis, algorithms for routing emergency vehicles through traffic, a drive-up booth for Covid-19 testing, and much more.

Companies that have made the Pledge are listed on the Open COVID Pledge website and include a number of well-known technology companies and research institutions. However, the Pledge has not yet seen wide adoption in certain key industries. For example, it does not appear that the Open COVID Pledge has been embraced by the pharmaceutical or medical device industries. In such situations, it is especially important for companies to carefully consider the impacts of being an early (or sole) adopter in an industry.

Both potential pledgors and licensees will need to consider measures to track the use of any licensed IP. For a licensor, this can help with license compliance during and after the license term. For a licensee, it can help prevent inadvertent incorporation of the licensed IP into the licensee’s other products or services. Finally, it is important to consider the respective rights of potential parties after the pandemic is over and the license terminates. For example, how will parties handle inventories of licensed products that remain after the license period is over (e.g., is the licensor willing to grant an additional sell-off period or will it require destruction of infringing articles, etc.). As another example, how will the parties handle ownership of any derivative works created by the licensee during the license term?

The Open COVID Pledge is an inspiring example of how companies are pooling their intellectual property in order to bring about a quick end to this pandemic. However, it is a pledge that should not be taken lightly as it requires companies to do their due diligence before pledging or using pledged IP. If you think the Pledge might be right for your company, more information can be found on the Open COVID Pledge website at www.opencovidpledge.org.

Tags
Intellectual Property, COVID-19 and Economic Impact Resource Center, Patent Counseling, Prosecution & Litigation, Copyright Counseling & Litigation, Crisis Management
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