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The battle over CRIPSR patent heads to federal appeals court

By Jesse Schwartz
Published: August 2nd, 2017

The longstanding dispute over who owns the rights to the gene-editing technology CRISPR has reached a federal appellate court.

The University of California (UC) and its partners in a European patent for CRISPR aim to reverse a decision by the Patent Trial and Appeals Board (PTAB) that favors the Broad Institute of MIT and Harvard.

Along with the University of Vienna and Emmanuelle Charpentier, a director at the Max-Planck Institute in Berlin, the UC Regents requested that the U.S. Court of Appeals for the Federal Circuit overturn the PTAB’s ruling of “no interference in fact” between 12 patents related to CRISPR that list the Feng Zhang of the Broad, and a patent application filed by Charpentier and UC Berkeley researcher Jennifer Doudna.

UC Berkeley and its partners secured their patent in March from the European Patent Office. In April, they showed intent to appeal the PTAB decision, asserting that the appeals board misinterpreted legal standards set by the Supreme Court and Federal Circuit when it determined that the Broad’s claims were not obvious in light of UC’s previously filed patent application.

The university has stated that the Federal Circuit should agree to their earlier request that the PTAB reinstate the interference case so that priority of inventorship could be better determined. 

At the same time, Broad has expressed confidence that the PTAB decision will remain intact through the Federal Circuit’s review.

“The [UC] brief hinges on its argument that, although [UC’s] work simply involved characterizing a purified enzyme in a test tube, it rendered obvious that genome editing could be made to work in living mammalian cells,” a statement from the Broad reads. “This is inaccurate, as the PTAB noted repeatedly in its decision.

“To overturn the PTAB decision,” the statement continues, “the Appellate Court would need to decide that the PTAB committed significant errors of law or lacked substantial evidence to reach its decision. Given the careful and extensive factual findings and legal analysis in the PTAB’s decision, the Appellate Court will need to find many errors to return the case to the PTAB for further proceedings.”

Sources: Clinical OMICs and TechCrunch

Editor’s Note: For information on our recent webinar CRISPR Confusion: A Legal and Practical Analysis for IP Professionals – now available on DVD or on-demand video – CLICK HERE.

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