Tech Transfer eNews Blog

New PTAB ruling revives the longstanding battle over CRISPR rights

By Jesse Schwartz
Published: July 10th, 2019

A Patent Trial and Appeal Board ruling has reignited the three-year-old, high-profile battle over who invented a key feature of the gene editing technology CRISPR.

The fight involves the University of California (UC) and the Broad Institute in Cambridge, MA, and is centered on patents covering the use of CRISPR in the more complex cells of eukaryotes, which includes humans. These patents are key to the potentially lucrative development of innovative CRISPR-based medicines.

The USPTO eventually awarded the Broad several patents for the use of CRISPR in eukaryotes. UC then requested an interference based on its own submitted patent, but the PTAB ruled against it in 2017. A year later, a U.S. appeals court denied another appeal filed by UC, and it seemed the battle had finally been put to rest.

Now, based on new claims within UC’s CRISPR patent, PTAB has ruled there is in fact a potential interference that must be examined. According to UC’s lead attorney Eldora Ellison, PTAB initially ruled there was no interference because the UC patent involved far-reaching claims of CRISPR for many systems, while the Broad only focused on eukaryotes.

“What [PTAB] said is, ‘We’re actually not going to have a fight at this point in time, because we think that these are two different inventions,” says Ellison. “The Broad likes to act like the earlier decision was some kind of a ruling about the sufficiency of UC’s patent applications disclosure. And that’s not the case. It’s just a comparison of the claims.”

In a statement, the Broad claims that the new interference “challenges the validity of [UC’s] eukaryotic claims,” that the Broad is the “senior party,” meaning that UC “carries the burden of proof” and must convince PTAB that the Broad team did not invent the eukaryotic use of CRISPR.

Catherine Coombes, a patent attorney at HGF in York, UK, who does not represent the Broad or UC but is involved in CRISPR patents, says that the new interference further complicates the fight to the point that UC and the Broad may decide to cut a deal.

“Given the complexity of the landscape, and as the thickening of the landscape continues, the desire to get some form of collaboration for licensing only enhances for third parties,” says Coombes.

In the past, the Broad has hoped UC would enter a “patent pool” to resolve the battle, which would effectively allow both parties to reap financial benefits without becoming entangled in legal disputes. According to Ellison, the interference may not increase pressure on UC and the Broad to reach this kind of settlement, but she says it is “a great question.”

Source: Science

Posted under: Tech Transfer e-News

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