USPTO revives fight over CRISPR patents

The US Patent and Trademark Office (USPTO) has revived the dispute between the Broad Institute of MIT and Harvard and the University of California, Berkeley (UC Berkeley) over which first invented the CRISPR gene-editing technology.

Yesterday, June 25, the USPTO said it would conduct an interference proceeding between 13 patents and one application to the Broad Institute and ten patent applications filed by UC Berkeley, all covering the use of CRISPR/Cas9 in eukaryotic cells.

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

The current proceeding, which could result in the cancellation of the Broad Institute’s patents, was started by the USPTO, rather than one of the parties.

Back in February 2017, the Patent Trial and Appeal Board (PTAB) determined that the Broad Institute’s patents concerning CRISPR technology don’t interfere with patent claims filed by the UC, Berkeley.

UC Berkeley had requested the proceeding, alleging that the claims of 12 patents and one application owned by the Broad Institute interfered with its own application.

“Broad has persuaded us that the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference,” said the PTAB in 2017.

This finding was affirmed by the US Court of Appeals for the Federal Circuit in September 2018, in a decision that concluded the Broad Institute’s patents were valid and rejected a challenge brought by researchers at UC, Berkeley.

However, the dispute was revived earlier this week.

Eldora Ellison, lead patent strategist on CRISPR matters for UC Berkeley and a director at Sterne, Kessler, Goldstein & Fox in Washington, DC, said: “The initiation of this interference proceeding highlights that previous decisions involving the Broad did not determine who was the first to invent this technology, and it lays out a pathway for resolving this important issue.”

The Broad Insitute welcomed the action and said it looked forward to participating in the interference process.

“Importantly, in this interference, the USPTO designated Broad, MIT, and Harvard as the senior parties and UC Berkeley as the junior party, with the count directed to uses of the CRISPR system in eukaryotic cells. This further underscores the significance of Broad’s prior claims,” said a release from the Broad Institute.

It added that the senior party is presumed to be the “first to invent” and the junior party carries the burden of proof.

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