UC receives blow in legal battle over CRISPR-Cas9 patents

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The University of California received a blow in its legal fight over CRISPR-Cas9 on Monday, when a U.S. appeals court rejected the university’s arguments for exclusive patent rights to the gene-editing tool.

The U.S. Court of Appeals for the Federal Circuit ultimately ruled that patents held for inventions by the Broad Institute, Harvard University and the Massachusetts Institute of Technology are distinct from the UC’s patents. The institutions have engaged in a long battle over the patents, which have the potential to secure both prestige and billions of dollars in licensing agreements.

According to UC Berkeley spokesperson Jennifer Tong, there are still various other patent applications under review, and many more are likely to be filed.

“In other words, we are still in the early stages of the development of this technology,” Tong said in an email. “As a result, the economic consequences of any one court decision are hard to measure and may prove to be unimportant over time.”

Researchers co-led by Jennifer Doudna, a campus professor of biochemistry and molecular biology, authored a 2012 paper in which they demonstrated CRISPR-Cas9’s ability to edit DNA. A year later, Broad Institute researchers led by Feng Zhang applied the technology to eukaryotic cells, which the UC argued does not constitute a separately patentable discovery.

According to Robert Merges, a UC Berkeley law professor and co-director of the Berkeley Center for Law and Technology, the ruling merely answered the question that the Broad Institute’s application of CRISPR-Cas9 in eukaryotic cells was a distinct invention — “nobody doubts” that Doudna originally invented CRISPR-Cas9.

“You’re talking about slicing up the pie, and all it says is Berkeley still has a good slice of pie — it’s just that they’re going to have to cut in the Broad people,” Merges said. “It’s a loss in the sense that we didn’t get the whole pie.”

Charles Robinson, vice president and general counsel for legal affairs at the UC Office of the President, said in a statement that the UC is considering other legal options in the courts and with the United States Patent and Trademark Office, or USPTO.

According to Merges, the university has many legal options, including suing companies that have taken licenses from the Broad Institute. In this scenario, a company that wants to use CRISPR-Cas9 would have to obtain a license from both the UC and the Broad Institute.

“We are pleased that the USPTO will continue to issue patents to UC for its foundational technology relating to the use of CRISPR-Cas9, including its use in any environment. As it has for 150 years, UC will translate this and its many research discoveries for the public good,” Robinson said in the statement. “Our commitment to develop and apply CRISPR-Cas9 for the betterment of humankind is unchanged by today’s decision.”

Jenny Weng is the lead crime and courts reporter. Contact her at [email protected] and follow her on Twitter at @jennyweng1999.