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17 January 2018Europe

Broad Institute to appeal CRISPR patent revocation

The Broad Institute of Harvard and MIT has said it will appeal against a decision by the European Patent Office (EPO) to revoke one of its patents covering CRISPR/Cas9 technology.

In an oral hearing today, January 17, the EPO’s Opposition Division revoked European patent 2,771,468 in its entirety after finding that Broad could not claim two key priority dates.

Broad released a statement saying the decision was a “technicality” and that it will appeal to the EPO’s Technical Board of Appeal.

A written decision from the Opposition Division will follow.

The issue of priority was crucial to the outcome and, as Daniel Lim of Allen & Overy tweeted live from the hearing, the proceeding wrapped up “very quickly” once the decision on priority had been made.

In Europe, a patent applicant or its successor can enjoy a right of priority to an earlier application, with the later application being able to claim the earlier date.

But case law has indicated that where a later patent application is not filed by the same applicant, a transfer of priority must have occurred before the filing date of the later application.

In this case, the Opposition Division said Broad is not considered a successor because neither the inventor (Luciano Marraffini) nor his institution (Rockefeller University) of the earlier patent application—from which priority was claimed—were named as joint applicants on the later filed patent application (‘468).

The Opposition Division had previously held, in a preliminary opinion, that neither Marraffini nor Rockefeller University assigned their rights to claim priority, and stated that Broad is not entitled to claim the priority dates of December 12, 2012 or January 2, 2013.

This was confirmed today.

But Broad said the rules applied by the EPO are inconsistent with international patent treaties, including the Paris Convention.

It added that the Technical Board of Appeal is expected to use this case “as an opportunity to review and resolve this international inconsistency, not just for CRISPR patents, but for a wider range of European patents and applications that originated as US provisional applications”.

Catherine Coombes, patent director at HGF in the UK, said the decision will also affect Broad’s other CRISPR/Cas9 patents in Europe where Rockefeller University was not named as an applicant at the filing date.

Nine other opposed patents have been put on hold, but today’s decision is likely to apply to seven of those.

Coombes said: “For the other patents in Europe under opposition where the outcome of priority is of critical importance, the EPO has given Broad exceptional extensions to the timeframe to respond to the oppositions. This has occurred for procedural economy so that the decision on priority could be taken into account in the other opposition proceedings.

“Oppositions on these patents will now continue and we are likely to see these patents also revoked or severely restricted in opposition before any appeal decision is made,” she added.

Broad announced two days ago that it had settled a dispute with Rockefeller University over ownership of certain Broad patent filings relating to CRISPR.

But in response, Coombes said the EPO cannot determine ownership—only priority—so the arbitration outcome is not enough to provide a valid claim to priority in Europe.

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More on this story

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.
Biotechnology
4 November 2019   The Board of Appeal of the European Patent Office has issued new communication summarising issues that will be discussed at a hearing on whether the EPO erred in its revocation of a patent owned by the Broad Institute.
Americas
4 June 2018   As innovation in the CRISPR field continues across the world, questions are being asked about the role of regulating such a powerful tool, while discussions around licensing the technology continue, as LSIPR reports.

More on this story

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.
Biotechnology
4 November 2019   The Board of Appeal of the European Patent Office has issued new communication summarising issues that will be discussed at a hearing on whether the EPO erred in its revocation of a patent owned by the Broad Institute.
Americas
4 June 2018   As innovation in the CRISPR field continues across the world, questions are being asked about the role of regulating such a powerful tool, while discussions around licensing the technology continue, as LSIPR reports.