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Law360 (April 1, 2020, 7:04 PM EDT) -- A GOP senator has proposed adding 10 years of extra patent protection to new and existing medical devices and drugs used to treat COVID-19.
Under the bill proposed by Sen. Ben Sasse, R-Neb., on Monday, new patents aimed at treating COVID-19 wouldn't become effective until the national emergency is called off and 10 years would be added on to the ordinary patent term.
The proposal is included in the Facilitating Innovation to Fight Coronavirus Act, which first deals with shielding providers from liability in treating COVID-19 patients.
The patent section applies to "a new or existing pharmaceutical, medical device, or other process, machine, manufacture, or composition of matter, or any new and useful improvement thereof used or intended for use in the treatment of the coronavirus disease 2019."
Ropes & Gray LLP partner Matthew J. Rizzolo was particularly drawn to the fact that, if passed, this bill would expand patent protection for devices that weren't initially created to treat COVID-19. He said it definitely raises a "red flag" that he expects people to look hard at as the legislation develops.
Lowenstein & Weatherwax LLP partner Bridget Smith was more concerned that the bill may not be the most effective path if the lawmaker's intent is to incentivize innovation to cut short the pandemic. Instead, she said, an accelerated examination for new inventions would be more effective, as it would get new patents into companies' hands quickly.
Without an accelerated pathway, she said, the patents realistically issued during the crisis would be those submitted before the first cases of the virus were detected.
"It sounds great in practice but without knowing specifically if this will really help incentivize, which is what we so critically need right now," Smith said. "It would have been great to see something like accelerated examination to get patents in the hands of inventors a lot faster. If you want to spike patent investment and patent work and invention right now, that seems like a really simple way to do it, and quite common."
She pointed to the U.S. Patent and Trademark Office's Green Technology Pilot Program, another incentive program, through which she was able to get clients patents in as little as three months.
Smith was also concerned that the proposed law is too narrow, given how quickly viruses evolve. Thirty years from now, a drug to treat COVID-19 may not have that much use, she said.
However, Rizzolo said, if a vaccine developed for COVID-19 also works on other viruses — for example, the common cold — those 10 years would be invaluable for the patent holder.
Likewise, Smith said the protection would be great for medical devices, such as improvements in ventilator technology, which don't have to be tailored specifically to the virus.
Rizzolo also said the bill possibly draws in ties to the Public Readiness and Emergency Preparedness Act, which provides certain immunity during public health emergencies. By not starting the patent term until after the emergency ends, it's likely that infringers would be immune from infringement litigation while responding to the pandemic, but they risk being sued after.
"Someone, after the fact, looking at potentially thousands or millions of products that were supplied in response to this public health emergency and then saying, 'Wait a minute, I have the patent that covers this, maybe I should have been paid royalties for that,' and then they sue someone after the fact." Rizzolo said, adding, "You get the protection long-term, the trade-off is you can't enforce it until after the pandemic is over."
--Editing by Stephen Berg.
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