17 February 2017Americas

CRISPR patent row not over yet, say lawyers

Although the Patent Trial and Appeal Board (PTAB) gave a win to The Broad Institute of Harvard and MIT in the CRISPR patent conflict against the University of California (UC), Berkeley and the University of Vienna, lawyers say the dispute may still not be resolved.

The PTAB’s decision, which was handed down on Wednesday, February 15, explained that the Broad Institute provided sufficient evidence to show that its claims, which are all limited to CRISPR/Cas9 systems in a eukaryotic environment, do not interfere with UC Berkeley’s claims, which are not restricted to any environment.

LSIPR spoke to Brian Nolan, partner at Mayer Brown, who discussed the possible outcomes of the PTAB’s decision, as well as Catherine Coombes, senior patent attorney at law firm HGF, who explained that this decision may have effects in Europe.

“This is a big win for the Broad Institute and MIT,” said Nolan.

CRISPR/Cas9 is a gene-editing technique that can target and modify DNA with high accuracy.

Nolan added that one of the implications of the board’s decision is that it will potentially lead to more parties getting licences for the CRISPR technology.

The PTAB decided that the inventions by the Broad Institute “would not have been obvious over the invention of CRISPR/Cas9 systems in any environment, including in prokaryotic cells or in vitro, because one of ordinary skill in the art would not have reasonably expected a CRISPR/Cas9 system to be successful in a eukaryotic environment.”

The board therefore terminated the interference, which UC Berkeley had initiated.

“The PTAB’s decision has made it clearer now about which party a potential licensee should approach if they were to work with the CRISPR technology limited to a eukaryotic environment,” said Nolan.

According to Nolan, the Broad Institute would be the clearer party to approach at this stage, but he further explained that the long CRISPR dispute between the two parties is not likely to end here.

“I would expect UC Berkeley to appeal to the US Court of Appeals for the Federal Circuit.”

Coombes explained that this decision may have effects in Europe as well.

“Usually inventive step in Europe is based on whether a person of ordinary skill in the art would have a reasonable expectation of success,” she said.

​I​f this criterion is used, the Broad Institute’s European patents​ on CRISPR/Cas9, which are the only such granted patents there, could be confirmed as being inventive over other patents because it was not known “whether CRISPR/Cas9 would work to cut DNA in a eukaryotic environment”.

“However, there is also a body of case law by which the European Patent Office can apply a different criterion​ for inventive step in Europe, which is simply ‘try and see’,” explained Coombes.

If this were applied, it could be difficult for the Broad Institute and ​other CRISPR patent applicants, including Sigma-Aldrich, “because the fact that six groups managed to get CRISPR/Cas9 to work in an eukaryotic environment within weeks of one another shows that there was a clear motivation to try”.


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.