EPO Board of Appeal issues communication on BI CRISPR/Cas9 patent hearing

The Board of Appeal of the European Patent Office (EPO) 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.

The patent in dispute (European patent number 2,771,468) covers CRISPR/Cas9 technology for the “engineering of systems, methods and optimised guide compositions for sequence manipulation”.

The communication, issued on Wednesday, 30 October said the hearing, which will span 4.5 days, will focus on one core issue:

“A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is this priority claim valid even without any assignment of priority right from B to A?”

The Broad argues yes, while the EPO said no.

The dispute dates to January 2018, when the European Patent Office’s Opposition Division revoked a patent owned by the Broad Institute and the Massachusetts Institute of Technology, after finding the Broad could not claim two key priority dates.

The Broad had filed to register the ‘468 patent at the EPO on the basis of a PCT filing which claimed priority from a number of US provisional applications. One of these provisional applications named an inventor-applicant, Luciano Marraffini, who was not named on the PCT application.

The Opposition Division of the EPO held the view that Broad’s priority claim is not valid because neither the inventor of the patented technology (Luciano Marraffini), nor his institution Rockefeller University, are named as joint applicants on the European patent application.

In its latest communication, the Board of Appeal said the hearing will focus on what is deemed the correct interpretation of Article 87, the priority right provision of the European Patent Convention.

The Board said current case law appears to favour the EPO’s position: that all applicants listed in the priority application need to be listed in the subsequent application.

In particular, the parties will present arguments on what is the correct interpretation of Article 87 (1) condition iii).

Condition iii) states that “any person” filing a subsequent European patent application must also be the person filing the first application, or the successor in title.

It said that both parties have also made “extensive submissions regarding the meaning of ‘any person’”. The Board of Appeal said it is of the view that the term “any person” is ambiguous, and attempts to elucidate the meaning of these provisions is “difficult and most unlikely to be successful”.

It said if condition iii) of Article 87 (1) did not exist, it would be possible for a third party, entirely unconnected with the person filing the priority application, to file a subsequent application for the same invention.

Put bluntly, “the third party would be able to steal someone else’s right to the patent application”, the board said.

The hearing is set to take place on January 13-17, 2020.

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