Lawyers question need for Patent Act amendments as companies share IP during COVID crisis

The federal government’s Emergency Response Act includes Patent Act amendments, which lawyers say only slightly change what already existed in the legislation. The willingness by industry to share IP, they say, could also mean the new legislative powers are not are not acted upon.  

“We've had provisions in our patent act since the beginning of patent law in Canada that has allowed government to use patented technology,” says Daphne Lainson, partner at Smart & Biggar LLP. “The ways that applied has generally been in times of war.”

Under the new s. 19.4 of the act, if the Federal Minister of Health decides there is a public health emergency, the commissioner of patents can authorize the government, or other parties, to make, construct, use and sell a patented invention – without infringing. The authorization will last one year and licenses to use patents will not be issued after Sept. 30, 2020. Under the amendments, the application for use of the patents would now be coming from the Minister of Health instead of the federal or provincial governments. Non-governmental entities are also now expressly allowed a compulsory license to use the patent, while the patentee remains capable of creating and selling their own patent.

“This is really limited. So, unless there's another piece of legislation, the Minister of Health will have to make an application by September 30. So, we have a very short window where they could make an application and that license is only going to last for one year,” says Lainson.

The new provision also narrows the ability of a patent owner to challenge their IP use by the government or other entities to respond to the health emergency. Prior to the amendment, the patent holder could appeal to the Federal Court and challenge “any decision of the commissioner,” which included the commissioner’s decision to grant access to the patent to meet the emergency need, says Carol Hitchman, partner at Sprigings Intellectual Property Law. The changes narrow that power to challenge to situations where those using the patent with the blessing of the patent commissioner are doing so outside of the terms of the commissioner’s authorization, she says.

Micheline Gravelle, leader of Bereskin and Parr LLP’s life sciences group says there’s been a positive response to COVID-19 from patent holders, which may indicate the new Patent Act section won’t need to be used.

Many companies are allowing access to their IP to produce health-care equipment and develop new treatments. For example, medical technology company Medtronic has released the design specifications for its Puritan BennettTM560 (PB560) ventilator. Canadian company Baylis Medical partnered with a group of entrepreneurs and philanthropists called Ventilators for Canadians, to load-up Canada’s supply using the Medtronic design, wrote Noel Courage in a Bereskin and Parr blog post.

The Kitchener, Ont.-based 3D printer and robotics company InkSmith is contributing its IP for the stockpiling of personal protective equipment. InkSmith has made the 3D print file of its face-shield head piece available for public use and the hockey equipment company Bauer – which manufactures hockey visors – is retooling to make medical face shields.

Also, in the global search for a vaccine, pharmaceutical companies are also allowing access to their patented drug IP for COVID- clinical trials, even pooling their proprietary information with competitors.

“Right now, there's no cure. There's no vaccine. So, the things that are the most needed are the ventilators and the masks and I think there's been a good effort for people to share that,” says Gravelle.