Home > Topics > Contracts and Agreements to Support Partnerships > The Use of Nonassertion Covenants: A Tool to Facilitate Humanitarian Licensing, Manage Liability, and Foster Global Access > Editor's Summary, Implications and Best Practices

Nonassertion covenants are agreements that certify that a party or parties will not assert and/or defend IP rights (typically patents) they possess. Nonassertion covenants take one of three forms:

1. An agreement between two parties (bilateral nonassert);
2. An agreement among several parties (multilateral nonassert); or
3. A public statement (broad proclamation).

Nonassertion covenants can be used in a broad range of IP management scenarios. For example, nonassertion covenants are particularly useful as a way to grant developing countries access to essential innovations in health and agriculture. Nonassertion covenants have been used in the software industry and have also been used to facilitate access to biomedical research reagents; examples of these kinds of nonassertion covenants are also presented in this chapter.

Nonassertion covenants can provide numerous benefits. Public statements have advantages over traditional open-standards committees or institutions:

• Through nonassertion covenants, standards development is streamlined and implementation is accelerated;
• Commitments not to enforce certain patent rights can be highly specific or broad in nonassertion covenants;
• Nonassertion covenants are not likely to be entangled by antitrust concerns; and
• Nonassertion covenants in the form of public statements do not cost anything to enforce.

In agricultural biotechnology, nonassertion covenants are increasingly common, for several reasons:

• Nonassertion covenants can be used to circumvent any liability associated with licensing;
• Nonassertion covenants can make research tools available to those who could not otherwise obtain or afford them;
• The transaction costs associated with nonassertion covenants are lower than those associated with bilateral and multilateral licensing agreements.

It is important to further note that nonassertion covenants are not patent pools. A patent pool involves explicit granting of patent rights to other, specified, parties. A nonassertion covenant is a pledge to relinquish certain rights and not sue someone whose actions would otherwise be considered patent infringement. In essence, a nonassertion covenant is a sort of preemptive patent infringement dispute resolution mechanism.

The nonassertion covenant should clearly describe which actions will be allowed, and which will not. Thus, it is advisable to have the assistance of patent counsel when preparing a nonassertion covenant.

When carefully drafted and clearly proclaimed (where applicable), nonassertion covenants can be very useful. They can give developing public-sector R&D institutions in developing countries access to essential research tools and methodologies and thereby make health and agricultural biotechnologies available to those who most need them but can least afford them.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Nonassertion covenants are important alternatives to IP licenses. They can be used to gain access to essential innovations in health and agricultural biotechnology. There are but one way for the public sector to be creative in its interactions with the private sector.

For Senior Management (university president, R&D manager, etc)

• Nonassertion covenants can be used to facilitate broad access to essential innovations in health and agricultural biotechnologies.
• A nonassertion covenant can be used to accelerate access to innovations developed by your institution. However, it can also help build good will and foster a spirit of cooperative collegiality between the public and private research sectors.

For Scientists

• Nonassertion covenants may become increasingly common. Therefore, you should know what they do, and do not, allow. If you are unsure, contact your technology transfer office before using patented technologies.

For Technology Transfer Officers

• Whereas patent pools can be constructed to limit access to IP rights, thus creating antitrust concerns, nonassertion covenants expand access to intellectual property.
• Keep track of what IP rights have been released, by third parties, pursuant to nonassertion covenants. These technologies, such as research tools, can then be used in your own institution’s R&D endeavors. However, the technology transfer office will need to communicate this information to the institution’s scientists and researchers.