The U.S. Patent Trial and Appeal Board ruled there was no interference between the patents requested by Broad Institute and the University of California regarding CRISPR technology, prompting the UC system to consider further legal steps to secure patent rights over the use of CRISPR-Cas9 in all types of cells and organisms.
The board found that the the two parties’ applications of the CRISPR technology were separately patentable. The Broad Institute’s CRISPR-Cas9 patent applications have focused on eukaryotic cells, while UC Berkeley researcher Jennifer Doudna’s application covered uses of CRISPR-Cas9 in any setting, including eukaryotic cells.
As the lawsuit stands, those who want to use the CRISPR-Cas9 technology for eukaryotic cells — such as for research on animals or plants — will need to obtain licenses from both the University of California and the Broad Institute, according to Doudna.
“We can use an analogy of … tennis balls — so (the Broad Institute has) a patent on green tennis balls, we will have a patent on all tennis balls,” Doudna said in a press conference. “That’s the situation that we’re in, that this … patent board decision means.”
Attorney for the university Lynn Pasahow said one institution holding a patent for the entirety of a technology and another for a specific application of that technology is common.
The UC system has already considered appealing the U.S. Patent Trial and Appeal Board’s decision, according to a UC Berkeley press release.
“The University of California and its co-owners maintain that using the CRISPR-Cas9 system in eukaryotic cells is not separately patentable from using the system in other cell types, and for that reason disagrees with the PTAB’s decision,” the press release said. “We continue to maintain that the evidence overwhelmingly supports our position that the (university research) team was the first group to invent this technology for use in all settings and all cell types, and was the first to publish and file patent applications directed toward that invention.”
CRISPR technology, potentially worth billions of dollars, uses a naturally occurring protein system found in bacteria to edit genomes. A team led by Doudna, who is also a campus molecular and cell biology professor, and Emmanuelle Charpentier, now a professor at the Max Planck Institute for Infection Biology, first published an article about the technology in 2012 in the journal Science.
Feng Zhang at the Broad Institute and George Church at Harvard Medical School found that the technology could be applied to human cells in 2014, and they were awarded a patent for the separate application, according to the Washington Post.
Throughout the legal process, research on the technology has continued.
“I am engaged in bringing the power of the CRISPR-Cas9 technology to benefit humanity and develop new industries in biomedicine, agriculture, public health, and environmental technologies,” Doudna said in a statement. “I am pleased that research using CRISPR-Cas9 continues to drive exciting advances in many areas of biology.”