Intellectual Property Issue PH #1

IP in the Time of COVID-19: Limiting IP Rights for COVID-19 Solutions

Villaraza & Angangco - Ma. Sophia Editha Cruz-Abrenica | LEXOLOGY

In a patent infringement case, the patent holder or anyone with a financial interest in the invention must waive his patent rights. The IP Code also provides patent holders with the ability to voluntarily license their patent rights to a third party via technology transfer arrangements. In times of national emergency, such as the COVID-19 pandemic, the Director of the Bureau of Legal Affairs may allow the exploitation of a patented invention without the owner's consent. The government or an authorized third person can exploit a patented invention if it is determined by an appropriate government agency that the public interest or public health requires such exploitation. Among the conditions are that the invention be used in a non-exclusive manner and that the patent holder be adequately compensated.

With regard to products of university-based research and development, such as the COVID-19 testing kits developed by the UP-NIH, the Philippine Technology Transfer Act of 2009 provides that research development institutes or institutions own the intellectual property rights. The University of the Philippines Intellectual Property Rights Policy of 2011 ("UP IPR Policy") provides that, as a general rule, it belongs to the inventors. The university, on the other hand, may waive its rights to the patent, subject to certain conditions. Since intellectual property can be considered "private property," the state may take patents related to the fight against COVID-19.

Reference:

Ma. Sophia Editha Cruz-Abrenica. (2020). IP in the Time of COVID-19: Limiting IP Rights for COVID-19 Solutions. Retrieved form: https://www.lexology.com/library/detail.aspx?g=f681793e-f830-40a7-988c-13d7b689d792

Insights

One of the most serious issues that countries are dealing with as a result of the COVID-19 pandemic is a lack of resources to combat and contain the virus. Personal protective equipment (PPEs), testing kits, ventilators, pharmaceutical and healthcare products, as well as other laboratory and medical equipment, are among the resources available. However, developing these concepts and inventions is not enough to be effective in the fight against COVID-19. The time and money spent planning and developing these items will be wasted if they are unable to be manufactured and disseminated due to legal obstacles and worries about intellectual property rights. As for the property rights based on the IP Code of the Philippines in Sec 76.2. In a patent infringement case, the plaintiff must be the holder of the patent or anyone possessing any interest in the patented invention. In other words, if the holder of the patent or anyone possessing any interest in the invention refuses to institute an action for infringement, thereby waiving his patent rights, no other person or entity can institute the same. The IP Code also provides patent holders the ability to voluntarily license their patent rights to a third party via technology transfer arrangements (Chapter IX, IP Code). And it must be noted that technology transfer arrangements need to conform with requirements for certain mandatory and proscriptions against certain prohibited clauses, and those that do not conform to such need to be approved and registered with the IPOPHL Documentation and Technology Transfer Bureau in order for the arrangement to be enforceable.