LSIPR webinar: No end in sight for CRISPR IP saga, says HGF
Press releases in recent months that suggest the CRISPR IP saga is about to end are too optimistic and miss out many of the nuances of the current situation, according to Claire Irvine, partner at HGF.
“Such articles have been written largely on the basis that the University of California, Berkeley (UC, Berkeley) and friends have the upper hand, following the recent allowance of an important US patent application (number 13/842,859),” Irvine said, during a webinar hosted by Life Sciences IP Review yesterday, March 12.
Press reports tend to focus on what are seen as the two major players in the field, UC, Berkeley and the Broad Institute of MIT and Harvard, and their ongoing conflict over inventorship.
However, there are numerous other parties in the CRISPR domain which are often missed out of press coverage, such as Vilnius University in Lithuania, which was the first to file a patent application in the US on a gene-editing system using CRISPR/Cas9.
“As a patent attorney, I see the CRISPR field as murky and, as you will gather from the title of this webinar, I think there are a few more chapters to go,” she added.
Irvine likened the current CRISPR landscape to a number of motorists on a motorway, all trying to overtake each other in the outside lane and being reluctant to pull over and discuss issues over a cup of coffee.
She noted that, after filling its first application in December 2012, the Broad Institute realised it was in a race and accelerated its plans, meaning that although it was the last group if the main players to file a CRISPR patent, it was the first to get to grant, which has added to complications in the CRISPR landscape.
Irvine went on to detail UC, Berkeley and the Broad’s battles in the US and Europe before turning to the expansion of the CRISPR landscape.
“You can get patents for new applications of CRISPR systems, but this comes with a health warning,” she said.
For example, Irvine has come across a prosecution problem mentioned in an examination report relating to a Harvard College (one of the schools that makes up Harvard University) patent for CRISPR/Cas9 to correct sickle cell diseases.
The European Patent Office examiner for the application said: “Of course the applicant will try to argue that it was not a one-way street situation because he could have chosen other options… However, where one option is akin to a motorway while the other is winding unpaved roads, the applicant is presented with a clear one-way street situation.”
This means that if you’re looking to add claims in the CRISPR landscape, you need to think about how you’re going to say you’ve overcome problems rather than presenting something like, “we could have done this with zinc fingers, but we’ve done it with CRISPR/Cas9”, advised Irvine.
She went on to discuss freedom to operate in the CRISPR space, the potential of patent pooling and whether the current battle over the technology could become largely redundant.
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