UC Berkeley loses CRISPR patent at EPO
The University of California Berkeley (UCB) has lost a CRISPR patent in Europe in the latest twist in the long-running IP saga over the gene-editing technology.
The European Patent Office (EPO) handed down its decision on April 13, revoking the EP3241902 patent on the grounds of an invalid priority claim and delivering a blow to UCB’s CRISPR patent rights in Europe.
The written decision outlining the reasoning behind the revocation has yet to be published and the UCB has appealed the decision.
The ruling comes after the EPO revoked the Broad Institute’s CRISPR patent EP2771468 back in November 2020, after it found issues with its claimed ownership.
In the wake of breakthrough technological advances in 2012-2013, biotech and pharmaceutical companies have sought to patent CRISPR/Cas9, a gene-editing technique that can target and modify DNA with high accuracy.
This has prompted a spate of litigation proceedings worldwide, including the US where the UCB and the Broad Institute are waging an ongoing legal dispute over which body first invented the breakthrough technology.
During the latest proceedings at the EPO, opponents argued the ‘902 patent was invalid because a UCB publication, “ Jinek 2012”, provided relevant prior art.
They also argued that the patent’s priority claim was invalid because a skilled person faced an undue burden in carrying out the claimed invention.
The EPO found against the UCB, holding that their earliest priority filing on May 25, 2012, contained insufficient data and technical description to support the claims of the granted patent. This meant that the UCB’s own 2012 publication became prior art, leading to a revocation of the patent for lack of inventive step.
In Europe, the EPO has become a key battleground for patent challenges in this hotly contested field as opponents can challenge the validity of an issued European patent within a relatively short time frame of it being granted. In addition, the office enables parties to file an opposition via a third-party “straw man” to conceal their identity.
At present, the EPO’s opposed European CRISPR patents include those owned by the University of Vienna, and Emmanuelle Charpentier, the Broad Institute, Massachusetts Institute of Technology, Harvard University, and Sigma-Aldrich.
A source involved in the proceedings who did not wish to be named told LSIPR that the latest development highlighted the EPO’s strict stance on the principle of “entitlement to priority”.
“This serves as a warning to patent applicants that it can be dangerous to rely on a ‘thin’ initial patent filing with limited data to support a claim to priority,” they said.
The source added: “This latest revocation of UCB’s patent indicates that priority challenges, whether based on formal defects or the substantive content of the priority document, continue to be useful lines of challenge at the EPO.”
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
