CRISPR technology holds the promise of providing researchers and technologists with the most powerful genetic tool since the biotechnology revolution began forty years ago. However, legal disputes over patent rights have clouded the prospects for broad dissemination of the technology. In particular, the two university owners of the patents and applications for CRISPR, MIT/Harvard’s Broad Institute and the University of California-Berkeley, have been locked in a bitter interference over which group of inventors has priority.
The Patent Trial and Appeal Board decided earlier this spring that there was no interference between the competing claims. But this is not a best outcome for potential licensees, leaving open the prospect that separate licenses will be needed from both patent owners.
The case has not only complicated the promulgation and commercialization of CRISPR-based research, it is also raising important issues surrounding patent practice and licensing, particularly in biotech.
Technology Transfer Tactics’ Distance Learning Division has recruited Kevin E. Noonan, partner with McDonnell Boehnen Hulbert & Berghoff LLP and Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group, to lead this critical and timely program. He will discuss the following topics:
- A brief overview of the technology
- A review of the patent positions of the parties
- A discussion of the arguments raised in the Interference
- An assessment of the PTAB’s decision and its affect on the patents and applications
- Analysis of strategies for further appeal
- Impact on patent practice – claim strategy
- Impact on licensing
- Predictions regarding the patent and licensing landscape if the parties do not settle
- Likelihoods and advantages of settlement
PLUS: Hear the original recorded Q&A portion of the program
Meet Your Program Leader:
Kevin E. Noonan, PhD, JD
Partner
McDonnell Boehnen Hulbert & Berghoff LLP
Dr. Noonan serves as Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group. An experienced biotechnology patent lawyer, he brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology. Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program “60 Minutes” that addressed the issue of gene patenting.
