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23 January 2020EuropeRory O'Neill

Broad Institute presses for CRISPR settlement after EPO revocation

A competitor of the Broad Institute has said that a European Patent Office (EPO) ruling last week has weakened the CRISPR/Cas9 patent owner’s negotiating hand in any future settlement between the parties.

The EPO’s decision to revoke the Broad’s patent prompted the Harvard-based research institute to once again call for all parties “to move beyond litigation” in the battle for ownership over the gene-editing technology.

But Eric Rhodes, CEO of ERS Genomics—which licenses CRISPR/Cas9 patents owned by rival CRISPR patent owner Emmannuelle Charpentier—said the EPO’s ruling “significantly reduces the Broad’s CRISPR/Cas9 patent footprint in Europe and should make licensing decisions much easier” for those looking to gain access to the technology.

The Broad is involved in a long-standing dispute with the University of California (UC) group, which also includes the University of Vienna and Charpentier, for original inventorship of CRISPR/Cas9.

“I do think this mostly settles the dispute in Europe,” Rhodes told LSIPR.

Responding to the Broad’s claim that most of its 21 European patents would be unaffected by the EPO’s decision, Rhodes said:

“I would say that [the nine affected patents] are fundamental. The surviving patents are lesser applications of CRISPR.”

Is a settlement likely?

The two sides are currently embroiled in an interference proceeding at the US Patent and Trademark Office (USPTO).

Commenting on the Broad’s call for a resolution to the dispute, he said that, as required by law, “the two sides have been in touch” but failed to reach an agreement.

“Everyone wants to see this resolved, but there’s a lot of history here,” Rhodes added.

“Reaching a settlement would be complicated, but there is a feeling among a lot of the groups that it would be the best outcome.”

According to Rhodes, the Broad had pushed harder for a settlement since momentum swung towards the UC group in the dispute.

Last June, the USPTO agreed to UC’s request to initiate an interference proceeding, examining the validity of 13 CRISPR/Cas9 patents owned by the Broad.

The proceedings will also cover ten patent applicants filed by UC.

‘Repeated calls’ for a resolution

“The Broad has stepped up its calls for a settlement ever since things started to turn against it,” Rhodes said. “They keep saying more and more that we should get together [to talk]—they weren’t saying that before.

“For UC, now that the tide has turned in its favour, maybe there’s a less of a need to be open to too much flexibility,” he said.

In response to Rhodes’ comments, a Broad spokesperson told LSIPR: “Actually, we have been calling on all parties to reach resolution for more than seven years, including in nearly every press release we have ever sent on the topic.”

“We called for all parties to reach resolution after the PTAB decided in favour of the Broad in 2017, and again after the US Court of Appeals for the Federal Circuit upheld the decision in 2018,” he said.

“Our message has remained exactly the same: The best thing, for the entire field, is for the parties to reach a resolution,” the Broad spokesperson added.

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9 November 2020   The European Patent Office has released the long-awaited reasoning for its decision to uphold the revocation of a Broad Institute CRISPR/Cas9 patent. In January this year, the EPO’s Board of Appeal concluded that the Broad’s patent, EP2,771,468, lacked novelty due to an invalid claim to priority. The EPO dealt with three questions in its reasoning.
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1 March 2022   Patents core to the breakthrough gene-editing technology CRISPR belong to the University of Harvard and the Massachusetts Institute of Technology’s Broad Institute, the US Patent and Trademark Office has ruled.

More on this story

Americas
9 November 2020   The European Patent Office has released the long-awaited reasoning for its decision to uphold the revocation of a Broad Institute CRISPR/Cas9 patent. In January this year, the EPO’s Board of Appeal concluded that the Broad’s patent, EP2,771,468, lacked novelty due to an invalid claim to priority. The EPO dealt with three questions in its reasoning.
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.
Americas
1 March 2022   Patents core to the breakthrough gene-editing technology CRISPR belong to the University of Harvard and the Massachusetts Institute of Technology’s Broad Institute, the US Patent and Trademark Office has ruled.