IP Considerations During COVID-19
Maucher Jenkins is a full service international intellectual property firm.
The current pandemic may cause companies to think about whether they need to consider intellectual property (IP), or whether they should prioritise their commercial situation as well as research and development into new areas. This article aims to help companies understand how they can manage their IP in the current circumstances and also understand the legal situation when moving into new areas.
Firstly, it is important to note that if an invention is created in the current circumstances it is still advisable to consider whether it would be possible to protect that invention. IP rights (such as patents, trade marks and designs) are often a valuable asset to a company and are often also seen as important to investors. The filing of an application to protect the IP generated within a company can help safeguard that company as they collaborate with others.
At the present time, companies may be worried about funding and the prospect of costs associated with obtaining and enforcing IP rights may be daunting. However, there are various options available for managing these costs as well as a number of routes to obtaining funding in this area. If a company has an existing IP application/ registration, a number of the patent offices around the world have announced extension periods for responding to time limits. In addition, if a company is at an early stage and is exploring what IP they may have, the IP Audits Plus programme provided through the UK Intellectual Property Office may assist them in identifying their IP and provide advice regarding how to manage that IP going forwards. If a company is accepted into this programme, the IP audit will typically be worth £3000, where the UK Intellectual Property Office will fund up to £2500 for the work carried out.
In the current circumstances, a large number of manufacturers are adapting and changing what they produce to meet the demands for products and equipment to fight the battle against COVID-19. As a result, many production lines are being repurposed and new skills are being developed. It is important that manufacturers understand the legal situation when entering a new area, for example, to determine whether there is any risk of current or future infringement of existing third party IP rights. At the present time, it is probable that patent owners will not enforce their patents to prevent manufacture. However, the possibility of future damages or royalties may remain a threat. The Crown exemption for patent infringement may possibly be used in the present circumstances. This would allow the UK Government to authorise others to use a patent right without the prior agreement of the patent owner to the extent that they are services of the Crown. The patent owner would typically be compensated at a later date, following negotiation with the government. In addition, compulsory licenses may be available in the present circumstances, where the Government may allow a company to make and/ or sell a patented product without the consent of the patent owner. In this case, the patent owner would still own the rights in respect of the patent, including the right to be paid compensation for copies of the product that are made under the compulsory license. As a form of compensation for the patent holder, the manufacturer may be required to pay a fair market price for the drug/ product.
At the current time it is important that a large focus is placed on research, development and manufacture to try to help in the fight against COVID-19. As companies move into new areas of manufacture and/ or collaborate with others it is important for them to understand the legal situation and the potential for protecting any IP that is developed. At Maucher Jenkins we have significant experience of helping medical and scientific companies get the best IP protection for their research and development.
For more information, please contact Reuben Jacob and Fiona Kellas at www.maucherjenkins.com.