Winning strategies for developing and protecting intellectual property in uncertain times.

Coronavirus disease 2019 (COVID-19) is an infectious disease caused by a new strain of virus. Although the world has faced several major pandemics over the last 100 years, Coronavirus is the worst pandemic since the 1918 influenza pandemic, the so-called “Spanish flu.”

Advances in technology since 1918 have allowed scientists to develop sophisticated tools and software, beyond drugs and pharmaceuticals, to defeat COVID-19. Technologies related to artificial intelligence, communications, and networking enable rapid diagnosis for early symptoms, high-precision tracking of patients who have contracted the virus, acceleration of drug discovery, instant infectious testing, and other mitigation solutions which will help to slow the spread of the virus. Further, due to during social distancing efforts, people around the world are experiencing the wonders of web conferencing, remote schooling, telemedicine, and food delivery – all enabled by technological development.

Looking back throughout human history, disasters have always inspired innovation. The unfortunate events of 9/11 triggered a decade of technology disruption. Solutions for airport body scanners, robots for ruins digging, new construction designs, and surveillance technology were developed in response to unmet needs. Such solutions and innovations promise a safer world. COVID-19 has already sparked a new wave of innovation. As a result, we predict a “gold rush” of innovation, fueled by need to bring humanity back to normal life.

Innovation is typically protected by patents, which grant an exclusive right to make, use, or sell a product or a process. Nevertheless, a patent alone cannot provide optimal protection if it is not accompanied by a robust intellectual property (“IP”) strategy, i.e., a plan which leverages value from IP assets to meet the company’s business goals.

We recommend the following patent strategy to protect COVID-19 related innovations:

     1.  File as soon as possible to beat the gold rush – Filing patent applications without delay is always a good approach as patent priority is set with respect to the first filing date. However, as many organizations continue to develop solutions to cure or mitigate the virus, time is critical. It would be disappointing to later learn that a competitor had applied for a patent months, weeks, or even days earlier, thereby blocking others from receiving a patent grant.

     2.  File multiple applications on different possible implementations – When rushing to find a solution, trial and error approaches may be crucial to research progress. This may lead to a number of potential implementations for the same product. From the outset, filing for protection for some or all implementations can provide broad protection as well as an opportunity to later focus on an implementation that is commercially proven.

    3.  File patent applications under accelerated examination routes – Accelerated examination significantly reduces the time between the date of filing and the date that on which patent is granted. This may allow for the development of a product which can be more rapidly brought to market. In the U.S., accelerated examination can be requested as under track-1 examination or by filing a petition to make special.

     4.  Seek global protection – As most countries address COVID-19 cases, limiting patent protection to a single jurisdiction may limit the commercial value of a patent. Filing in key economies simultaneously with a PCT “international” application may be a recommended course of action to secure protection in multiple countries.

      5.  Consider limitations imposed by governments on necessary drugs and related products – Israel, among other countries, has issued compulsory patent licenses on certain drugs. U.S. patent law also provides for some provisions establishing restrictions on certain technologies, however, such provisions have not been in forced yet.

      6.  Broaden the scope of the patent to applications beyond COVID-19 – Mr. Bill Gates, founder of Microsoft, predicted in 2015 that a health crisis would one day destabilize the United States. Mr. Gates’s prediction is now a reality and, unfortunately, humanity will face other pandemics in the near future. When applicable, broadly claiming the solution without tying the disclosed technology to a specific type of virus may be advisable.

       7.  Use available grants to fund your research and IP strategy – Governments, philanthropic organizations, and even venture capital firms have extended grant offers to organizations seeking to find solutions related to COVID-19. Apply for and use such grants to accelerate innovation within your company.

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