8 December 2016Americas

CRISPR dispute likely to continue in federal courts

Following the CRISPR/Cas9 patent hearing on December 6 between The Broad Institute and University of California, Berkeley (UCB), it is very unlikely that the case will end at the US Patent and Trademark Office (USPTO), according to one lawyer.

Brian Nolan, partner at Mayer Brown, argued that the defeated party would be very likely to bring the case further to the federal courts.

Nolan added: “Through the interference, UCB may be able to show that it is entitled to patent claims that are not limited to a specific environment. Effectively, UCB could get claims to the use of the CRISPR/Cas9 process in general.”

The interference proceeding, which took place at the USPTO, will determine who is the true inventor of the CRISPR gene-editing technology.The proceeding had the judges setting the definition of the disputed invention as “the use of CRISPR in a method in a eukaryotic cell”.

UCB, joined by the University of Vienna and Emmanuelle Charpentier, argued that the decision on the definition should be revisited.

In the proceeding, the Broad Institute is requesting priority based on its patent application filed on December 12, 2012. This allegedly includes examples demonstrating the use of the CRISPR system to conduct genome editing in eukaryotic cells.

UCB, which filed applications on May 25, 2012 as well as in 2013 and 2014, is similarly asking for its applications to be prioritised.

Following the hearing, the Broad Institute of MIT and Harvard said it remains confident that it will be confirmed as the first inventor of the technology.

Lee McGuire, chief communications officer, said in a statement: “Today’s hearing reinforced the fact that the Broad Institute, MIT and Harvard were first to invent the subject matter in patent applications with regards to CRISPR genome editing in eukaryotic cells.”

McGuire added: “The underlying facts have not changed and we are confident the patent office will continue to recognise the leadership of the Broad, MIT and Harvard in developing this transformative technology”.

According to Chris Jagoe, partner at Kirkland & Ellis, both parties presented highly fact-intensive arguments, with very little legal argument.

The institute argued that a person of ordinary skill in the art in 2012 would not have a reasonable expectation of success for creating a CRISPR system in eukaryotic cells after the UCB inventors had described the necessary and sufficient components of a system in a test tube.

UCB argued that a person of ordinary skill in the art would have had reasonable expectation of success and would only need to use conventional tools to get it to work.

Jagoe said: “If Broad is successful in persuading the panel then it could find no interference in fact, and Broad’s involved claims limited to eukaryotic cells would stand.”

He added: “If the UCB were successful, then the panel could remove the eukaryotic cell limitation from the count, and UCB could rely on its test tube work to prove priority of the generic environment-independent invention.”


More on this story

Americas
19 October 2017   The Broad Institute of Harvard and MIT has signed a patent licensing deal with DuPont Pioneer to provide CRISPR/Cas9 technology to agricultural researchers and producers.

More on this story

Americas
19 October 2017   The Broad Institute of Harvard and MIT has signed a patent licensing deal with DuPont Pioneer to provide CRISPR/Cas9 technology to agricultural researchers and producers.