In the longstanding dispute over the rights to the gene-editing technology CRISPR-Cas9, the University of California (UC) has filed an appeal with the Federal Circuit to overturn a decision that set back its efforts to win foundational patents on the innovation.
The US Patent Trial and Appeal Board (PTAB) in February ruled that CRISPR patents awarded to the Broad Institute of Harvard and MIT in 2014 did not cover the same technologies that UC had tried to patent. According to PTAB, the claims can be patented separately, leaving UC free to pursue its initial patent applications that stemmed from earlier research on less advanced cell types. The ruling, according to most legal observers, meant that the Broad retained the more valuable intellectual property, likely costing UC hundreds of millions in future licensing dollars.
The university is now attempting to reverse the PTAB decision with the claim that the Broad’s patents on the use of CRISPR-Cas9 in the cells of advanced organisms, including all plants and animals, are similar enough to UC’s patent application on the use of the technology in more primitive cells, such as bacteria, that they should not have been granted.
The University of Vienna and biologist Emmanuelle Charpentier, who are partnered with UC in the CRISPR case, have joined the university in its new appeal.
“Ultimately, we expect to establish definitively that the team led by [UC researcher] Jennifer Doudna and Emmanuelle Charpentier was the first to engineer CRISPR-Cas9 for use in all types of environments,” says Edward Penhoet, a special advisor on CRISPR to the president of UC and chancellor of UC Berkeley.
In response, the Broad issued this statement: “Given that the facts have not changed, we expect the outcome will once again be the same. 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.”
In its appeal, UC must show that the PTAB judges committed an error of law, like ruling incorrectly on a motion or wrongly blocking evidence. Broad spokesperson Lee McGuire says that “seems unlikely.”