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22 June 2018Americas

Broad secures US discovery win in CRISPR EPO dispute

The US Court of Appeals for the First Circuit has confirmed that a request to obtain discovery for use in a foreign proceeding, in this case at the European Patent Office (EPO), will be denied unless the relevance of that discovery can be shown.

Circuit Judge Juan Turruella delivered the precedential decision on Wednesday, June 20.

Genome editing company Intellia Therapeutics has an exclusive licence to proprietary CRISPR/Cas9 technology owned by Jennifer Doudna, a founding member of Intellia.

A team led by Doudna and Emmanuelle Charpentier had conducted research on bacteria that can carve up and target genetic material, which led to Doudna filing the provisional patent application in the US in May 2012. In June the same year, they published an article describing their findings.

In October 2012, members of the Broad Institute of Harvard and MIT submitted a manuscript on the same topic and, in December, filed a provisional patent application relating to genomic sequencing.

The Broad Institute filed several other applications related to CRISPR technology over the following months in the US, as well as Patent Cooperation Treaty (PCT) applications. The PCT applications resulted in the Broad Institute receiving four European patents, which Intellia challenged at the EPO.

George Schlich, a patent agent for Intellia, argued that the Broad Institute’s European patents cannot claim right of priority to the Broad Institute’s provisional patent applications filed in the US because the applicants listed in those applications are not the same as the ones in the later PCT applications.

Subsequently, Schlich filed a petition under section 1782 of 28 USC at the US District Court for the District of Massachusetts. Under that section, a party can file a petition at a district court to obtain discovery for use in a foreign proceeding.

Schlich sought discovery from the Broad Institute, as well as three researchers at the institution, in relation to opposition proceedings at the EPO. He wanted to obtain the inventorship study, as well as the assignment of the relevant rights to the corresponding inventions.

The Broad Institute submitted a declaration from a former EPO official, who said the issue presented by Schlich related to a dispute over inventorship or entitlement which the EPO has no jurisdiction over. As such, the Broad Institute argued that the discovery requested by Schlich would not be considered relevant by the EPO.

The district court ruled that Schlich is required to prove the EPO’s “receptivity” to the US court’s assistance in providing the requested discovery, and denied Schlich’s petition for discovery for lack of relevance to the foreign proceeding.

In 2017, the district court denied Schlich’s motion for reconsideration, prompting Schlich to appeal against the decision.

Upholding the ruling, Turruella said the district court “correctly considered all of the arguments and evidence” and that “Schlich had not shown that the requested discovery was relevant to the foreign proceeding”.

A request under section 1782 “that is plainly irrelevant to the foreign proceeding will fail to meet the statutory ‘for use’ requirement, and must be denied”, Turruella said, so the district court “did not misapply the law in denying the requested discovery”.

In this instance, “although the information sought by Schlich may have been relevant to the EPO opposition proceeding in a general sense, the district court concluded that limitations on the EPO’s jurisdiction to consider inventorship rendered it irrelevant”, Turruella concluded.

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