01 Sep Can US Seize Moderna’s COVID-19 Vaccine Patents?
August 27, 2020. Moderna, the Bio-tech firm famous for its progress on a COVID-19 vaccine, is reported to have never made the required disclosure of its US Government DARPA funding on its 157 patents and patent applications over aspects of its mRNA platform. Under typical U.S. government procurement contracts, a “subject invention” “means any invention of the contractor conceived or first actually reduced to practice in the performance of work under this contract”. 37 CFR 401.14. In these cases, U.S. Patent law requires inventors to identify the government funding contract on their patents and that the U.S government has a royalty-free, non-exclusive right to practice and authorize practice of the claimed invention. Failure to meet this requirement violates the terms of the funding agreement and entitles the U.S. Government to seize title to the patent should it choose to do so in its discretion. See Central Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1352-53 (Fed.Cir.2007). The U.S. Government holding title raises the notion whether Moderna’s patents will be effectively void because they will provide no exclusivity to their mRNA platform or vaccine derived from it.