A patent provides protection to the inventor for 20 years, during which period the patent owner has an exclusive right to commercialise the invention without infringement by a competitor. Three years ago, we reported that Hologic, the worldwide leader in breast imaging, had sued the Japanese company Fujifilm for infringing one of the patents that protect its digital tomosynthesis (DBT) systems. In a case where Fujifilm had been the original plaintiff, the judge ruled in Hologic’s favour, enabling the American company to maintain its dominant market position.
Earlier this week, The New York Times broke the story that Moderna, manufacturer of the successful mRNA vaccine against Covid-19, was in dispute with the National Institutes of Health (NIH) over patent rights to the vaccine. In August this year, Moderna filed an application with the United States Patent and Trademark Office (USPTO) in which the named inventors were all Moderna employees. The NIH has objected, arguing that three of its scientists – John Mascola, Barney Graham and Kizzmekia Corbett – collaborated with Moderna scientists to design the genetic sequence enabling the vaccine to produce an immune response.
This is an important case because, when it comes to commercialisation of the technology, it’s important who is listed on the patent as an inventor. It turns out that even before the Covid-19 pandemic engulfed the world in early 2020, Moderna and NIH scientists had been collaborating on the development of coronavirus vaccines. Moderna subsequently received a grant for $1.4 billion to develop and test its mRNA vaccine for Covid-19, and a further $8.1 billion to provide 500 million doses for the country.
That amounts to almost $10 billion of American taxpayers’ money and, if the NIH scientists are not named on the patent, Moderna is under no obligation to license the technology to other manufacturers. In fact, the Biden administration has expressed its frustration that the company, while generating huge profits for its shareholders, has done little to provide its vaccine for poor countries. Surprisingly, despite being in business for ten years, the Covid-19 vaccine is the first product Moderna has brought to market.
The company has claimed that only its scientists designed the vaccine while the NIH disagrees with this statement, arguing that the omission of its inventors deprives the agency of co-ownership of the patent and its commercialisation. The dispute – which will inevitably be settled in a court of law – has generated considerable commentary, with many accusing Moderna of duplicitous behaviour. Simply stated, it matters who gets the credit!