As COVID-19 continues to impact people around the world, many organizations and institutions are shifting gears to focus their efforts on ways in which they can help. Some are working to combat coronavirus by developing new testing or a vaccine. Others are contributing their facilities and products to manufacture new medical devices or protective equipment, or are creating innovative software solutions to aid during the pandemic. Some organizations and institutions are pledging to make their intellectual property (IP) freely available to end the COVID-19 pandemic. If you are considering making a pledge, it is important to ensure you understand your rights and obligations and how it impacts your own IP rights.
WHAT IS THE OPEN COVID PLEDGE?
The Open COVID Pledge is based on the concept of collaborative development, inspired by group efforts such as open source software and creative commons licenses. The pledge encourages organizations across the globe to make their patents and copyrights available for free for COVID-19 related solutions. This pledge was created by the Open COVID Coalition, which consists of attorneys and scientists from numerous countries.
Similar pledges have been tested with the courts since the 1980s, and by and large have been found to be enforceable. For instance, in the 1990s a group of companies pledged that they would not enforce their patents for open source code. Their goal was to gain traction in the marketplace by allowing the public to feel secure in adopting open source code without fear of infringement actions. Similar pledges have since extended to other industries, such as agriculture and automotive.
WHAT IS THE OPEN COVID LICENSE?
Where the pledge is an aspirational commitment to make IP available on a royalty free basis, the Open COVID License is the detailed right to use that IP. Organizations are able to utilize one of the license options, modify it or create a new one, as long as the use is consistent with the overall goal of the pledge. For instance, Intel has taken the Open COVID Pledge and created their own slightly altered version of the license.
The Open COVID Coalition used a number of different approaches in drafting the license. Their main goal was to make a “lightweight” license, given that speed is important. They also wanted organizations to have the ability to contribute IP to the fight against COVID-19 without giving up rights to their IP entirely; they maintain that IP outside of COVID-19 research.
WHAT SHOULD YOU CONSIDER WHEN DRAFTING A LICENSE?
As is the case with adopting any license, it’s important to consult an attorney first. If you are considering drafting your own license with your attorney, here are some issues to consider:
- Is the license based on a public pledge or a license from a single entity? The Open COVID License is based on a public pledge. If you are developing a license stemming from a public pledge, keep in mind that it will have to exclude some specifics because a large degree of complexity won’t work in a license stemming from a public pledge.
- What is the scope of the field? Defining the scope of the field is important. The Open COVID License defines the scope of COVID-19 as being tied to the definition by the World Health Organization (WHO).
- What are you going to license? The Open COVID License includes patents, copyrights and other IP, but not trademark or trade secrets.
- Should you include sublicense rights? If you are developing a license for a single entity, this is something to consider. If you are participating in a public pledge, sublicense rights are less relevant. The Open COVID License does not include the right to sublicense.
- Should you license your IP royalty free or reasonable and non-discriminatory (RAND)? The Open COVID Coalition advocates for royalty free because RAND adds a layer of complexity that could delay important COVID-19 related solutions.
- What is the term? It is critical to include a term in your license. The Open COVID License defines the term as December 1, 2019—one year after WHO announces the end of the pandemic. Intel included the same term and added, “but in any event, not beyond January 1, 2023.” There are now three license options, one of which includes the term Intel devised. The Open COVID Coalition decided to make the term one year after the end of the pandemic instead of immediately after the pandemic ends in order to give companies the chance to get rid of inventory and to form commercial agreements if interested.
- Should you include governing law? There is no governing law in the Open COVID License because almost all open source is written without it. The team felt it was critical to make the license as simple as possible, and recognized that some institutions and organizations wouldn’t be able to agree on a governing law.
- Should you include language about any special terms, provision of plans or other materials, or infringement of third-party rights by device? The Open COVID License includes special terms about “defensive suspension,” which outline circumstances under which the licensee loses its rights if it threatens to sue or initiates a lawsuit against the IP holder for infringement of any licensee intellectual property rights related to COVID-19. These items in particular are important ones to discuss with your attorney.
- Corporate social responsibility: Focusing on philanthropic endeavors as a part of company culture and feeling that participation is what is best for the greater good is one reason companies are taking the pledge.
- Loss leader approach: Making IP available now for free may help you license for profit or sell more products post-pandemic.
- Voluntary vs. compulsory: Many argue that it is better to participate voluntarily now, rather than potentially having participation imposed by the government later. Numerous governments around the world have taken these steps, and more are likely to follow suit.
If you are considering taking the Open COVID Pledge, utilizing the Open COVID License, or if you’re interested in developing a similar pledge or license, Wolf Greenfield attorneys are available to discuss your options and help you navigate this process. As an organization solely dedicated to IP law, we recognize the importance of protecting your IP—and can help you do so while contributing to ending the COVID-19 pandemic.
This alert is based on information shared during Practising Law Institute’s “The Open COVID Pledge and Other IP Reactions to the COVID-19 Pandemic” briefing on April 14, 2020 with additional information from opencovidpledge.org.