UC appeals decision that both parties in CRISPR-Cas9 lawsuit can maintain patents

David Lee/Staff

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The University of California filed an appeal April 12 to overturn the U.S. Patent Trial and Appeal Board’s, or PTAB’s, decision that there was no interference between the university’s and the Broad party’s — which includes the Broad Institute, Harvard University and Massachusetts Institute of Technology — patent applications for CRISPR-Cas9 gene-editing technology.

The appeal, filed on behalf of the University of California, the University of Vienna and Emmanuelle Charpentier, asks to bring back the interference, a proceeding to settle priority issues between multiple patent applications. While the board found the two institutions’ uses of CRISPR technology separately patentable because of the Broad’s use of the technology in eukaryotic cells, the university states that the methods used by the Broad were not different enough to have been granted patents.

“They are not separate inventions. It’s encompassed by what the university inventors (already) invented,” said Lynn Pasahow, the university’s attorney.

A team headed by UC Berkeley professor Jennifer Doudna and Umeå University professor Emmanuelle Charpentier discovered how to engineer the CRISPR system to make repairs and modifications to the genome and published these findings in the journal Science in 2012, according to a campus press release. This gene-editing technology is now potentially worth billions of dollars.

Robert Merges, a campus law professor and co-director at Berkeley Center for Law & Technology, said in this situation the university’s patent would be called a “pioneering patent,” while the series of patents issued to the Board would be called “improvement patents.” He added that it is possible for both patents to be issued.

Merges said the issue is not on which entity owns the technology, but rather on whether the eukaryotic application was a separate invention.

“To put it simply, the UC was saying we own this whole thing, and what the Broad said was, ‘No, you own the whole technique, but the Broad is going to own some techniques of it,’ ” Merges said.

Although the board has already determined that the Broad’s patent for CRISPR-Cas9 technology focuses predominantly on eukaryotic cells, the university firmly holds that its team has invented the use of the technology and its application in both noncellular and cellular settings, including eukaryotic cells, according to a campus press release.

Broad responded to the appeal by stating that an overturn of the PTAB’s decision seems unlikely, given that the Federal Circuit must find the PTAB having committed an error of law or lacked substantial evidence in making its decision.

“We are confident the Federal Circuit will affirm the PTAB decision and recognize the contribution of the Broad, MIT and Harvard in developing this transformative technology,” said Lee McGuire, a spokesperson for the Broad Institute of MIT and Harvard in an online statement.

Jacob Sherkow, associate professor of law at the New York Law School, stated that the Broad Institute was able to show how to get a generic system to work for eukaryotic cells.

“Both of the inventions were really similar … as a matter of patent law and scientific priority,” Sherkow said. “This seems like the archetype of scientific dispute that may give a rise to interference.”

Contact Christine Lee at [email protected] and follow her on Twitter at @christinejlee17.