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USPTO hands CRISPR rights over to the Broad Institute, but UC is still holding out hope

In the highly publicized, hard-fought dispute over a revolutionary gene editing technology known as CRISPR, the US Patent and Trademark Office has handed the rights to the Broad Institute of Harvard and MIT, defeating the University of California — for now.

According to UC Berkeley’s vice chancellor for research Paul Alivisatos, the ruling will actually allow UC’s patent claims to move forward. While the Broad’s patent covers the use of CRISPR in eukaryotic cells — those with a nucleus, like animal and plant cells — UC may be able to secure the patents it filed in 2012 covering all kinds of cells.

The patent judges wrote that an “earlier disclosure of a genus does not necessarily prevent patenting a species member of the genus,” implying that a wider category of a technology can be patented separately from a subset of it.

Given this opinion, UC believes that any company that wants to use CRISPR to develop human therapies will need to go license not just the Broad patents on eukaryotic cells but also the patents UC aims to secure on all kinds of cells.

“It is possible in patent law to get a patent on all tennis balls and for someone else to get a patent on green tennis balls,” says UC attorney Lynn Pasahow, referring to the two separate claims on the CRISPR technology.

Legal experts predict that UC will appeal, but also that the long financial strain on both parties in the dispute could mean the battle is nearing its end.

“This is the scenario that should most strongly drive the parties toward some kind of bargain,” comments Jorge Contreras, a law professor at the University of Utah. “We’ll see whether [UC Berkeley’s] patents are required for commercial implementation of CRISPR. If so, companies could need something from both Broad and UC.”

The idea– and hope — is that, if both parties are getting at least some kind of compensation for their technological efforts, perhaps they could finally reach a settlement.

Source: STAT

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