A proposed bill offers a potential boon to patent owners. If passed, the “Facilitating Innovation to Fight Coronavirus Act” will add ten years to the patent term of eligible inventions. However, the bill will temporarily curtail patent owner enforcement rights. Passage is not certain, with a number of critical issues for Congress to iron out.
Eligibility requires the patented invention to be useful for combatting COVID-19. Specifically, eligible patents must be “used or intended for use in the treatment of the Coronavirus Disease 2019 (COVID-19).” The proposed bill does not explain what inventions are “used or intended for use in the treatment of” COVID-19 and so the scope of eligibility needs clarification.
The bonus decade will not be free. In exchange for the term extension, patentees must set aside their right to exclude until the executive revokes the national state of emergency. Until that revocation, an eligible invention is available for public use. Upon return of rights to the patent owner, patent term will extend “10 years longer than it otherwise would” under Title 35.
The proposed bill leaves many important questions unanswered. For example, how will the public return IP rights to the patentee? Can a patentee elect to opt out and instead enforce a patent during the national state of emergency? Are the ten years added after other patent term adjustments? Does the bill apply to patents that were in force before the effective date of the Act or just to patents that issue after that date? Further, the bill, if passed, will create precedent for temporary override of patent rights, which faces strong headwinds from patent owner lobbyists. Given that critical questions remain unanswered and the likely resistance, the bill will need significant changes before (and if) it passes.
We will continue to monitor the trajectory of the Act and update this post as necessary. Morrison & Foerster’s COVID-19 Resource Center also provides current multidisciplinary guidance to help you face these evolving issues.