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Producing ventilators to combat COVID-19 - but are you free to make them? Tuesday 21 Apr 2020

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COVID-19 and the increased need for ventilators

In the fight against COVID-19 related illnesses, several organisations and individuals have begun designing and producing ventilators.  In the highest profile example Mercedes F1 engineers, working alongside University College London and the University College London Hospital recently reverse engineered, designed and manufactured a Continuous Positive Airway Pressure (CPAP) device (called the UCL-Ventura). This was completed in fewer than 100 hours. The partnership has since gone on to provide the devices to the UK’s NHS for free to keep patients out of critical care hospital beds. They have also announced plans to make them freely available for worldwide production.  In another example, vacuum cleaner giant Dyson built 15 thousand ventilators for UK hospitals, after redeploying its resources and expertise to design the new ventilator in just 10 days.

Recent reports of Australian companies following suit suggest there may not be enough ventilators in Australia to cope with a sudden surge in demand associated with COVID-19[1].

UCL-Ventura CPCP device developed by mechanical engineers, doctors and the Mercedes F1 team with UCL (Images courtesy of UCL Institute of Healthcare Engineering and Formula1.com)

Dyson CoVent Ventilator attached to a hospital bed (Image courtesy of Dyson)

IP infringement issues

The recent worldwide surge in ventilator design and production raises the question: Would producing these devices - either by reverse engineering or modification of existing designs – result in the infringement of existing patents or designs?  Currently there are over 1300 live Australian patents related to ventilators/respirators. New Zealand company Fisher & Paykel Healthcare is the leading applicant, with 417 active patents[2].  There is a risk that a new ventilator may infringe one or more of these patents.

Top 10 owners of ventilator-related patents in Australia, by number of live patents/applications.

In addition to ventilators and personal health protection, there has also been a call for drug companies to allow repurposing of their patented pharmaceuticals in the search for a treatment to Covid-19.  There may not be an issue of infringement if one is planning on giving the proposed device or pharmaceutical away, rather than selling it, but even in this case, the answer may not be straightforward.

Would these new ventilators and repurposed drugs infringe existing patents?

Seeking advice from a patent attorney is the best course of action. In such cases, all the usual tests for infringement would apply, including a careful review of the patent claims and prior art.  In addition, there are ‘Crown use’ provisions in the Patents Act that enable the Government, or authorised parties, to exploit these patented inventions if required because of an emergency (potentially including a pandemic).  However, at the time of writing no guidance on these provisions has been provided by the Federal Government. 

Protect yourself

Although we live in tenuous times, companies with valuable IP will still be looking to protect their positions and the IP associated with their products or inventions.  As such, if you are looking to produce or manufacture devices or treatments to combat the Covid-19 pandemic, it would be prudent to determine your freedom to operate in that technology space. 

At Glasshouse we specialise in searching comprehensively for patents and designs that may need to be assessed from an infringement perspective.  We offer a fully flexible approach and as part of the IPH listed IPH group, work closely with attorneys and lawyers from our sister firms in determining strategies and assessing results.

If your business is considering getting involved in developing devices or technology to aid in the fight against Covid-19, we congratulate you in advance and thank you for your efforts.  Feel free to contact us for advice or to enquire about carrying out a Freedom to Operate Search in order to protect yourself.

[1] https://www.mja.com.au/journal/2020/surge-capacity-australian-intensive-care-units-associated-covid-19-admissions

[2] Data obtained from AusPat as at the 7thApril 2020.

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