Law360 Quotes Rachel Elsby on How to Advise on IP Risks When Pursuing Coronavirus Treatments
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Akin Gump intellectual property partner Rachel Elsby has been quoted in the Law360 article “How COVID-19 Could Shake Up Patent Strategies,” which looks at how attorneys are counseling clients about IP risks involved in pursuing different COVID-19 treatments.
Last month, the article reports, two companies faced public scrutiny for their coronavirus-related actions, including suing a company developing COVID-19 tests for patent infringement and trying to obtain “orphan drug” status for an experimental COVID-19 treatment, which could have provided it with seven years of exclusivity on sales and tax credits.
While those situations involved some unique factors, the backlash, Elsby said, did “raise concern for companies with IP in this space about what the public perception would be if they enforce it.”
One way to handle patent rights during the pandemic, the article says, is to think about partnering with companies they might otherwise have targeted with infringement allegations, or consider offering royalty rates lower than what they would seek in ordinary times.
At this point, most companies with patents that could be useful in the pandemic are not really thinking about “building up the walls to exclude other people,” said Elsby, and they may be more willing to license their technology to others, rather than pursuing enforcement.
“Companies will be coming together in ways that are very different from what you see in a nonemergency scenario, where a company might be happy to go it alone or work with one partner,” she said. “I think now you’re seeing doors open up, where people are willing to work together and try to find a solution.”
For those companies hurrying to produce masks, ventilators, testing kits or other equipment related to the pandemic, Elsby said they should still take steps to ensure they are not infringing.
“Certainly, there is IP involved and it’s relevant,” Elsby said. “So looking at licensing and doing your diligence is really what is most important right now, and there's kind of a new urgency and deliberateness to the diligence that's involved.”
