Broad and ERS Genomics both claim victory in latest CRISPR ruling
The Broad Institute and ERS Genomics, a company that provides access to CRISPR/Cas9 IP owned by researcher Emmanuelle Charpentier, have both claimed victory in the latest round of the CRISPR inventorship battle.
On Thursday, September 10, the Patent Trial and Appeal Board (PTAB) ruled that Broad’s priority date precedes the University of California (UC) Berkeley group’s priority date. However, it also dismissed a series of motions filed by Broad, including one which sought to prevent the interference from proceeding.
The ruling refers to the group—which consists of UC Berkeley, University of Vienna and Emmanuelle Charpentier—as ‘CVC’. The Broad Institute, Harvard University, and the Massachusetts Institute of Technology make up Broad.
The PTAB dismissed a series of motions filed by Broad, including one which sought to prevent the interference from proceeding.
The PTAB’s decisions stem from an interference proceeding—which the USPTO instituted in June last year—between 13 patents and one application to the Broad Institute and ten patent applications filed by UC Berkeley, all covering the use of CRISPR/Cas9 in eukaryotic cells.
In last week’s decision, the PTAB accepted Broad’s request that its priority date be December 12, 2012.
While the PTAB rejected CVC’s request that its priority date be May 25, 2012, writing “the CVC inventors’ comments tend to indicate that they did not have possession of a functional CRISPR-Cas9 system in eukaryotic cells” at that time, it did accept January 28, 2013 as the priority date for CVC.
A communication from Broad said that although it is prepared to engage in the process before the PTAB and is confident the patents have been properly issued to Broad, “we continue to believe it is time for all institutions to move beyond litigation and instead work together to ensure wide, open access to this transformative technology”.
According to the institute, it is in the best interests of the entire field for the parties to reach a resolution.
In a win for CVC, the PTAB dismissed Broad’s argument that the interference was estopped by the judgment in the prior interference.
In February 2017, in the first interference, the board determined that Broad’s patents don’t interfere with patent claims filed by CVC.
The decision was subsequently affirmed by the US Court of Appeals for the Federal Circuit in September 2018, in a decision that concluded Broad’s patents were valid and rejected a challenge brought by researchers at CVC.
But, in last week’s decision, the board was not convinced that the interference proceeding was estopped.
“Although we agree that resolving the parties’ disputes in one proceeding may have been preferable, we do not agree that estoppel allows CVC’s claims to be cancelled in this proceeding,” said the PTAB, adding that the first interference ended without an award of priority or a determination of unpatentability for either party.
The PTAB has set Broad as the “senior party” and CVC as the “junior party” for the next phase of the interference process, which means procedurally that CVC will be required to file its proofs of inventorship first.
A UC spokesperson said: “While we disagree with the PTAB’s determination not to recognise UC and its co-owners as the senior party in this proceeding, we remain confident that the PTAB will ultimately recognise that the Doudna and Charpentier team was first to invent the CRISPR-Cas9 technology in eukaryotic cells.”
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