By Virginie Brien Gagnon and Frédéric Letendre
The current pandemic has spurred innovation, collaboration and technological improvements to combat COVID-19. Governments, businesses and organizations around the world have implemented novel systems and solutions in order to contribute to the “war effort”.
As an example, even before we discuss the lifting of patents (as of March 2020), the law allows the Canadian government to use patented inventions to respond to a public health emergency related to COVID-19, without having to obtain the permission of the patent holder, but with a monetary consideration. We might think of this as a form of expropriation.
At the other end of the spectrum, also with the aim to fight against COVID-19, but this time on a voluntary and free basis, Creative Commons offers an ingenious structure: the Open COVID Pledge.
What is the Open COVID Pledge?
Supported by major technology players, including Facebook, Amazon, IBM and Microsoft, the Open COVID Pledge is a project initiated by an international group of researchers, scientists, academics and lawyers aiming to make relevant intellectual property freely available to the public in the form of licenses to combat COVID-19. This project is now led by Creative Commons.
The Open COVID Pledge Licenses offer innovative corporations (called “Pledgors“) the opportunity to allow anyone, as a licensee, to use their intellectual property (“IP“) under specific terms that will be described below. For example, AT&T has made available under the Open COVID Pledge its patented technology for optimal routing of ambulances and other vehicles to reduce emergency transport time to hospitals.
This could be an interesting way for a corporation to showcase or test some of its products while fighting COVID-19. In fact, YULEX has assisted a corporation in the implementation of one of its licenses.
The different types of licenses: OCL Standard, OCL Compatible and OCL Alternative
A corporation can choose to license its IP under three types of Open COVID Licenses (“OCL“): OCL Standard, OCL Compatible and OCL Alternative.
These licenses are free of charge and valid for a period of one year after the World Health Organization (WHO) declares the pandemic over, but no later than January 1, 2023. However, corporations have the option of setting an expiration date later than January 1, 2023 if the WHO has not yet declared the end of the pandemic by that date. They may also continue to license their IP to certain licensees under new licenses (paid or unpaid) after the OCL expires.
OCL Standard Licences
The Open COVID Pledge offers three types of standard licenses, called OCL Standard, covering respectively the following IP elements:
- License on all IP (except trademarks and trade secrets) (OCL-PC v1.0 license)
- License on patented inventions and copyrights (OCL-PC v1.1 licence)
- License on patented inventions only (OCL-P v1.1 license)
These licenses do not give the corporation that owns the IP any rights on the improvements or derivative works created by the licensees, as each licensee owns and can commercialize the improvements they make. It will therefore be important for the corporation who owns the IP to ensure that its IP is well protected, for example by filing patent applications quickly on any new IP, to avoid ownership issues that may arise with its licensees.
Because OCL Standard licenses are very short and general, they may not be suitable for everyone. Corporations should therefore consider drafting their own license agreement and include clauses that are tailored to their needs and interests. This is possible with the OCL Compatible and OCL Alternative licenses discussed below.
OCL Compatible Licences
A corporation may choose to draft its own license tailored to its needs, under a license called OCL Compatible, the terms of which must be no more restrictive than the OCL Standard licenses. Each license will need to be reviewed and approved by the Open COVID Pledge team.
Compatible licenses can be used to cover specific types of IP. For example, a corporation may choose to license only its inventions (protected by patents) relating to a certain technology and exclude the corresponding software source code (protected by copyright). In all cases, it will be important to ensure that the corporation is authorized to license its IP and that the license granted does not violate any other contractual obligations it may have with respect to its IP. For example, a corporation’s IP that is exclusively licensed should be excluded from the OCL.
In addition, a corporation may want to insert general clauses such as governing law and venue in case of a dispute with a licensee, as the OCL Standard licenses do not contain them.
For example, the Japanese corporation Fujitsu Limited, which specializes in innovative computer products, has granted a custom license on all of its patents and industrial designs, which has been accepted by the Open COVID Pledge as an OCL Compatible license.
Some of the public licenses that the Open COVID Pledge has determined to be OCL Compatible are: Attribution 4.0 International (copyright only), CC0 1.0 Universal (copyright only), MIT (copyright and patents), Apache 2.0 (copyright and patents) and CERN Open Hardware Licence Version 2 – Permissive (copyright and patents). For example, Skopos Labs, specialized in artificial intelligence technology, has licensed some of its copyrighted works (including specific graphs, charts, and data) under a CC BY 4.0 license as an OCL Compatible licence.
OCL Alternative Licences
If some of the terms of the license are more restrictive than those of the OCL Standard licenses but are still consistent with the goals of the Open COVID Pledge, a corporation may obtain an OCL Alternative license. For example, a corporation may require licensees to inform the corporation of their use of the licensed IP or of any patent applications filed relating to technology derived from the licensed IP. A corporation may also require licensees to make their improvements and derivative works available to third parties on the same or similar terms as those contained in the corporation’s license (e.g. “Share-Alike” clauses).
However, certain clauses cannot be included in an OCL Alternative license, such as requiring licensees to pay a royalty for the use of the corporation’s IP or imposing a shorter license term than the OCL Standard licenses. Nevertheless, Sandia National Laboratories was able to obtain an OCL Alternative license expiring on June 30, 2021. Therefore, we infer that license analysis is done on a case-by-case basis.
Some of the public licenses that the Open COVID Pledge has determined to be OCL Alternative are: Attribution-ShareAlike 4.0 International (copyright only), GNU General Public License (copyright and patents) and CERN Open Hardware Licence Version 2 – Strongly Reciprocal (copyright and patents). For example, OVSI, specialized in oxygenation and ventilation systems, has licensed its patents under a CERN OHL (S) v2.0 licence, as an OCL Alternative licence.
How to participate in the Open COVID Pledge?
Are you an innovative corporation looking to contribute to the fight against COVID-19? You can contribute as a Pledgor by freely sharing your IP through an OCL. To become a Pledgor, you must announce on your website that you are participating in the Open COVID Pledge and that you are committed to freely sharing your IP. You will need to choose one of the licenses listed above or draft your own custom license tailored to your needs. You will then need to have your application and custom license, if applicable, approved by the Open COVID Pledge team. Once your application is approved, your corporation will be listed on the Open COVID Pledge website as a Pledgor.
You can also contribute to the fight against COVID-19 by using a Pledgor’s IP under an OCL. In this case, it may be useful to negotiate a license with the corporation that owns the IP so that its terms are tailored to your needs.
As mentioned above, we helped a corporation apply to the Open COVID Pledge as a Pledgor by drafting a custom license tailored to its needs. The process required several weeks of exchanges with the Open COVID Pledge team to comply with the OCL Compatible license criteria. It was a long process, but the Open COVID Pledge team was able to guide us all the way. We can now find the corporation’s invention on the Open COVID Pledge website.
Curious to see what IP is being licensed through OCLs? You can find this information on the Open COVID Pledge website.