Jorge Contreras

Jorge L. Contreras teaches in the areas of intellectual property law, property law and genetics and the law. He has recently been named one of the University of Utah's Presidential Scholars, and won the 2018-19 Faculty Scholarship Award from the S.J. Quinney College of Law. Professor Contreras has previously served on the law faculties of American University Washington College of Law and Washington University in St. Louis, and was a partner at the international law firm Wilmer Cutler Pickering Hale and Dorr LLP, where he practiced transactional and intellectual property law in Boston, London and Washington DC.
  • Joined: December 20, 2012
  • Articles: 22

Patents and Coronavirus – The Right to Repair

In March, 2020, two engineers in Brescia, Italy used a desktop 3D printing machine to fabricate needed replacement valves for more than 100 ventilator machines being used to treat coronavirus patients at a local hospital. News reports claim that the ventilator valves fabricated in Italy for a cost of about 1 Euro each were previously sold by the manufacturer for 10,000 Euro each. There is some debate about what happened next, but early news feeds reported that a parts manufacturer threatened to sue the engineers for infringing patents on the replacement valve. While the existence of the threat and the patents remains murky, the incident sparked legal commentary regarding the risk that volunteers fabricating parts for lifesaving devices, and the hospitals that use them, could be liable for patent infringement.

Patents and Coronavirus – Compulsory Licensing, Government Use And March-In Rights

The United States has two viable statutory mechanisms for addressing situations in which patent holders are unable or unwilling to supply sufficient quantities of goods or services to combat the coronavirus crisis: march-in rights under the Bayh-Dole Act and governmental use under 28 U.S.C. § 1498. Though each of these mechanisms presents challenges, these should be surmountable in many cases to ensure that diagnostics, vaccines, therapies and support equipment are produced and distributed rapidly and in sufficient quantities.

Industry Weighs In on DOJ’s Standards Essential Patent Policy Reversals

Beginning in November 2017, Makan Delrahim, head of the U.S. Department of Justice Antitrust Division, signaled that he would reverse many of the DOJ’s prior positions regarding technical standardization and, especially, patents covering technical standards (so-called Standards Essential Patents or SEPs) (the 2017 announcement is discussed in detail here). The latest step in this DOJ reversal of direction came in December 2018, when Mr. Delrahim announced that the DOJ would withdraw from a 2013 joint Policy Statement that the DOJ issued with the U.S. Patent and Trademark Office (PTO). The DOJ’s unexpected withdrawal from the Joint Policy Statement has prompted significant reactions within the industries affected by standardization, including statements of strong support for the DOJ’s new position by an inventors’ alliance and a coalition of large SEP holders, and statements urging the DOJ’s reconsideration by the American Antitrust Institute (AAI) [note: the author serves on the Advisory Board of the AAI] and a coalition of technology companies.