KtsDesign /
30 September 2019BiotechnologyCatherine Coombes and Emma Longland

CRISPR: Hearing all about it

The Boards of Appeal of the European Patent Office (EPO) have set aside four-and-a-half days in January 2020 for the hearing in T0844/18, the first appeal relating to CRISPR Cas9 technology in eukaryotes. The central discussion in this hearing will be about the formal requirements for claiming priority as this is an appeal by the Broad Institute, MIT and Harvard (Broad et al) to the revocation of their lead patent EP2771468.

In opposition, the patent was revoked after the formal requirements for priority were found not to be met for at least the earliest two priority claims; as a consequence the claims were found to lack novelty over two documents that became prior art after that loss of priority.

In preparation for the hearing in January, the board has asked all the parties in the appeal to confirm their requests and, unusually, for the opponents/respondents to nominate one party who will present the crux of the case on behalf of the rest for procedural efficiency.

The specific facts and law that led to the conclusion on priority have been discussed previously at length—see, for example, “CRISPR in Europe; Priority becomes just that at the EPO”, LSIPR, June 2017.

In summary, the inventor Marraffini was named as an applicant when the earliest two priority applications were filed, but evidence suggests that his priority rights in those applications were not owned by the applicants of the European patent at issue when it was filed, and Broad et al were not able to prove that the applicants did in fact own those rights.

Therefore, the Opposition Division decided that when the European patent was filed the applicants were not successors in title to Marraffini’s priority rights in that application, so that the priority claim to those earliest two priority applications was not valid. This is in accordance with the EPO’s longstanding interpretation and implementation of article 4A of the Paris Convention.

Appeal terms

In the appeal, Broad et al are looking to overturn this decision by arguing first that entitlement to priority should not be assessed by the EPO as this should instead be left to national courts; second that the EPO’s stance is actually incompatible with the Paris Convention (with respect to interpretation of the term “any person”, in particular); and third that US law should govern who “any person who has duly filed” is in article 87(1) EPC when priority is claimed from US applications.

Of course, in order to agree with these arguments, the Board of Appeal would need to turn away from the 20 or so years of priority decisions at the EPO, so Broad et al have an uphill battle in front of them.

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