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16 January 2020EuropeRory O'Neill

Breaking: EPO revokes Broad’s CRISPR patent

In a dramatic reversal, a European Patent Office’s (EPO) board of appeal has upheld the revocation of a Broad Institute CRISPR/Cas9 patent.

Yesterday, the board indicated that it would refer several key issues at the heart of the case to a higher panel, potentially triggering a lengthy delay.

But today the board has announced that, after consideration, it is already equipped to decide the case and agreed with the earlier Opposition Division ruling that the Broad’s patent lacks a  valid priority claim.

Daniel Lim, partner at Kirkland & Ellis, said the decision was “quite the change of heart” from the board.

“I can imagine that the stakes involved in this case and the level of interest and scrutiny have not made the Board’s life easy,” he said.

Yesterday’s proceedings opened with the  announcement that the board intended to refer at least three questions to the EPO’s enlarged board of appeal.

However, Emma Longland, patent director at HGF attending the hearing, told LSIPR that after three hours of deliberations, the board returned this afternoon saying that it “can answer all the questions and find that the EPO is able to decide the priority entitlement”.

The board told the hearing that the Opposition Division was correct in interpreting the meaning of ‘any person’ and national law should not be applied when interpreting ‘any person who has duly filed’, Longland reported.

The board then gave the Broad “15 minutes” to consider its next steps.

“That’s typical of the EPO,” Lim said. “You get decisions in real-time, and you’re expected to respond in real-time as well.”

The Broad has yet to publicly comment on the announcement.

“I think they will have been prepared for this possibility,” Lim said. “They’ll have been under no illusions about the volume of case law against them on the priority issue.”

Despite the “drama” of yesterday’s events he said, the decision taken today is “pretty consistent with the outcome many expected prior to the start of the oral hearing,” he said.

Background

The issues that looked likely to go before the enlarged board dealt largely with priority claims.

The Broad Institute’s CRISPR/Cas9 patent was revoked by the EPO opposition division for lacking a valid priority claim, prompting the appeal currently being heard in Munich.

That EPO took the decision because the Broad patent claimed priority from a US provisional filing, which was also filed in the name of an inventor-applicant who was not listed on the later European patent filing.

The Broad argued that it is entitled to claim priority from the provisional US filing because of the wording of a clause in the European Patent Convention (EPC).

Article 87(1) of the EPC states that “any person” who has filed a patent filing can claim priority. According to the Broad’s proposed interpretation, this includes any one of multiple applicants on the same filing.

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More on this story

Genetics
18 February 2021   ERS Genomics has agreed to license CRISPR-Cas9 technology to a Barcelona-based start-up which uses a zebrafish-based research model.
Biotechnology
6 April 2021   The updated rules included important changes involving amino or nucleic acid sequences and antibodies, as Clare Roskell and Samantha Moodie of Mathys & Squire explain.
Biotechnology
21 November 2023   Recent clashes over patents covering modified guide RNAs have exposed different approaches from the US and Europe—and new complications for the field, says Claire Irvine of HGF.