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Fed Circuit rejects UC Berkeley’s challenge to Broad Institute’s CRISPR patent


By Jesse Schwartz
Published: September 12th, 2018

The patent case pitting Harvard-affiliated Broad Institute against UC-Berkeley over the rightful inventor of CRISPR technology may be over after the Fed Circuit Court of Appeals rejected UC’s contention that the Broad’s patent covered ground already contained in its own technology.

In its ruling this week, The Court said, in essence, that the Broad patent covering CRISPR use in humans and other living organisms was not the same as the UC-Berkeley discovery, which relied on test tube experiments.

Scientists with UC-Berkeley and the University of Vienna led by Jennifer Doudna and Emmanuelle Charpentier were first to find ways to guide CRISPR-Cas9 molecular scissors to targeted locations on the genome. They filed their patent application in 2012 and say their work could be used for any living thing.

The Broad said it went well beyond the UC-Berkeley team’s work by proving CRISPR-Cas9 could work in plants and animals, including humans.

“The patents and applications of Broad Institute and UCB are about different subjects and do not interfere with each other,” Broad said in a statement hailing the decision. “It is time for all institutions to move beyond litigation. We should work together to ensure wide, open access to this transformative technology.”

The U.S. patent office had previously ruled that both groups would be entitled to patents because what they covered fell in different areas. The Fed Circuit said the agency’s decision was based on “substantial evidence.”
“The board performed a thorough analysis of the factual evidence and considered a variety of statements by experts for both parties and the inventors, past failures and successes in the field, evidence of simultaneous invention, and the extent to which the art provided instructions for applying the CRISPR-Cas9 technology in a new environment,” the court ruled.

UC Berkeley said it was evaluating its options, which could include asking the Federal Circuit to reconsider the decision or seeking a ruling from the U.S. Supreme Court.

Just how valuable the technology will be is unknown, since most products on the market involve agriculture and the real money is expected to involve human therapeutics. The Broad has pledged to join a worldwide licensing pool.

The Federal Circuit decision did not address the issue of first inventorship or patent validity. Rather, the case only decided “whether those claims are patentably distinct. It is not a ruling on the validity of either set of claims.”

Source: Bloomberg

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