The Patent Trial and Appeal Board, or PTAB, of the U.S. Patent and Trademark Office, or USPTO, announced an interference between multiple UC and multiple Broad Institute patents on June 25, a signal that the USPTO will resolve the seven-year ownership debate regarding CRISPR-Cas9 genome editing in eukaryotic cells.
On one side of this legal battle is UC and its collaborators, the University of Vienna in Austria and Emmanuelle Charpentier, director at the Max Planck Institute for Infection Biology in Berlin, Germany. On the other side is the Broad Institute, based in Cambridge, Massachusetts, and its collaborators, Harvard University and MIT, according to Barbara McClung, chief legal officer of Caribou Biosciences, a company that has an exclusive license to the CRISPR patent family from the UC and the University of Vienna.
According to a June 25 press release from the UC Office of the President, in September 2018, the U.S. Court of Appeals supported a PTAB judgement ruling that there was no interference between UC patent applications and Broad Institute patents, but this is no longer the case.
“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,” said Eldora Ellison, lead patent strategist on CRISPR matters for the UC and a director at the Sterne, Kessler, Goldstein & Fox law firm, in an email. “We are confident that the USPTO will ultimately recognize that the Doudna and Charpentier team hold the priority of invention specific to eukaryotic cells, as well as other settings covered by previous patents.”
According to McClung, the USPTO recognizes eukaryotic applications of CRISPR gene editing in Broad Institute patents as separate from CRISPR gene editing in any type of cell environment in UC patents.
McClung said she believes the UC applied for patent continuations for eukaryotic-specific methods to provoke the USPTO into declaring an interference with Broad Institute patents and that the UC is confident that it can win the interference in 2 1/2 to three years.
“Jennifer Doudna is one of the founders of Caribou Biosciences, so we believe the UC and their partners really invented CRISPR gene editing, so I’m looking forward to proving that,” McClung said.