European CRISPR decision takes a different direction

The story of patenting of CRISPR-Cas9 (discussed here) took a fresh turn recently with a European Patent Office decision going against one of the leading players. In the US, Europe and elsewhere, several research teams have applied for protection of aspects of the technology, but the spotlight has been pretty much fixed on the conflict between the Broad Institute and the University of California over some of the earliest filed applications

The US story has been widely reported. Falling within the final days of the first-to-invent system, the quarrel over earliest inventorship ended up before the US Patent Trial and Appeal Board. That dispute is ongoing, with the Court of Appeals for the Federal Circuit tasked with reviewing the PTAB’s decision that patents granted to the Broad and to the University of California could exist in parallel.

Now the European Patent Office’s Opposition Division has ruled that one of the Broad’s earliest-filed and most important CRISPR-Cas9 patents, EP 2 771 468, is not entitled to its earliest priority dates. This is because these key priority documents, filed in December 2012 and January 2013, named Luciano Marraffini of Rockefeller University as an inventor-applicant. But Marraffini was not named as an applicant on the later patent application. And there was no evidence that he had assigned over his rights in time. Meaning that other scientists’ publications after those earliest filing dates came into play. This left most of the Broad’s claims completely exposed to the later prior art and so invalid.

Meanwhile, the outcome of an arbitration between the Broad Institute and Rockefeller University to decide inventorship on the Broad portfolio left Marraffini off the list of inventors.

This is unlikely to help in the EPO, however, as the rules say that rights to priority should be cleared up before the patent application is filed rather than retrospectively.

The Broad immediately downplayed the significance of the ruling, saying it was based on a technicality. It has since applied for an accelerated appeal, highlighting the other patents in its portfolio that would be similarly affected. The Broad calls on the EPO Technical Board of Appeal to “harmonize the EPO procedures to be consistent with international treaties” and “recognize the same priority dates for the inventions as those the USPTO has repeatedly affirmed for the Broad’s US applications”. It has enlisted the support of a list of patent judges and other luminaries, but it is far from clear that the EPO appeal board will want to change its long-established approach.

There have been efforts to bring patents affecting the CRISPR-Cas9 portfolio into one licensing package. That would certainly make life easier for users of this enabling technology, although without the involvement of other patent owners the project cannot progress.

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