PTAB says Broad's CRISPR patents do not interfere with UC Berkeley's

The Broad Institute of Harvard and MIT’s patents concerning CRISPR technology do not interfere with patent claims filed by the University of California (UC), Berkeley and the University of Vienna.

This was the finding of the Patent Trial and Appeal Board (PTAB) yesterday, February 15.

“Broad has persuaded us that the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference,” said the board.

CRISPR/Cas9 is a gene-editing technique that can target and modify DNA with high accuracy.

The parties had appeared in front of judges at the PTAB in December last year for an interference proceeding, requested by UC Berkeley.

The judges set the definition of the disputed invention as “the use of CRISPR in a method in a eukaryotic cell”.

In the interference proceeding, the Broad Institute requested priority based on its patent application filed on December 12, 2012.

UC Berkeley, which filed applications on May 25, 2012 as well as in 2013 and 2014, similarly asked for its applications to be prioritised.

According to the PTAB's decision, the Broad Institute provided sufficient evidence to show that its claims, which are all limited to CRISPR/Cas9 systems in a eukaryotic environment, do not interfere with UC Berkeley’s claims, which are not restricted to any environment.

“This evidence shows that the parties’ claims do not interfere. Accordingly, we terminate the interference,” said the board.

In a statement, the Broad Institute said it agrees that the two sides’ patent applications cover different subjects.

“Broad Institute and collaborators were issued patents for methods for genome-editing in eukaryotic (including human) cells, while UC Berkeley and collaborators applied for patents concerning CRISPR methods based on studies in cell-free systems that did not involve genome-editing in eukaryotic cells.”

The institute stressed that there will be many patents issued in the CRISPR field over the next few years.

“As of February 2017, the USPTO has issued 50 patents with claims to CRISPR and/or Cas9, including a robust portfolio of 14 CRISPR patents to the Broad Institute, MIT and affiliated groups for inventions from Dr Feng Zhang and the Zhang lab,” said the institute.

Paul Alivisatos, UC Berkeley vice chancellor for research and professor of chemistry, said: “UC respects today’s ‘no-interference-in-fact’ decision by the PTAB and is pleased that its patent application covering the use of CRISPR/Cas9 gene-editing technology for all cell types can now move closer to issuance."

He added: “Nevertheless, the university continues to believe that the use of the CRISPR/Cas9 system in eukaryotic cells is not separately patentable from the general application of the CRISPR/Cas9 system in any cell type, as invented and claimed by the [Jennifer] Doudna/ [Emmanuelle] Charpentier group. As such, we will be carefully considering all possible legal options at this juncture."

UC Berkeley will proceed based on its assessment of "what best serves and supports the public interest and the greater good".