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18 July 2018Americas

Broad’s CRISPR patent hit with PGR petition

A CRISPR patent owned by the Broad Institute of Harvard and MIT is “unpatentable for indefiniteness”, according to an agriculture biotech company.

Benson Hill Biosystems filed a petition for a post-grant review (PGR) of the patent, which is licensed to Editas Medicine, at the US Patent and Trademark Office (USPTO) on Tuesday, July 17.

Broad’s patent (US number 9,790,490) relates to systems for the genetic engineering of eukaryotic cells, using a “Cpf1 CRISPR effector protein and at least one targeting nucleic acid component”.

Unlike other CRISPR patents, the ‘490 patent covers systems that do not use the original Cas9 enzyme, but rather uses a family of enzymes that Broad’s researchers discovered in 2015.

However, in the 85-page application for PGR filed earlier this week, Benson claimed that the ‘490 patent is invalid.

“The claims of the ‘490 patent cover an incredibly broad and vast genus of Cpf1 effector proteins,” the filing said, and only a few of the Cpf1 proteins disclosed are “actually functioned in the eukaryotic cells”.

Benson argued that the patent specification fails to identify how or why certain proteins are effective at functioning in the cells when others arenot. Additionally, the patent does not provide a description of any correlation between the structure of the proteins and their claimed function of cleaving DNA in eukaryotic cells, said the agriculture biotech company.

Broad’s patent fails to satisfy the written description requirement given the “manifest unpredictability” of the patent’s specification, Benson claimed, and the patent’s functional descriptions of the Cpf1 proteins are “internally inconsistent”.

Claims 1 to 60 of the patent “vastly” exceed the description in the specification, making them unpatentable for indefiniteness, the filing claimed.

Benson requested that the USPTO grants its petition for PGR and has asked the agency to cancel the claims of the ‘490 patent due to a lack of practical utility.

In February 2018, the USPTO granted Benson US patent number 9,896,696, which covers a CRISPR genome editing nucleases tool.

Broad has yet to respond to yesterday’s petition.

In January, the European Patent Office revoked one of Broad’s European patents covering CRISPR/Cas9 technology after finding that the institution could not claim two key priority dates.

And earlier this year, Issi Rozen, chief business officer at Broad, spoke to LSIPR about the way the institution chooses to license its proprietary CRISPR technology and the challenges in protecting it.

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