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Broad Institute CRISPR patents upheld

20 February 2017

By Ryan Ross

Appeared in BioNews 889

The US Patent and Trademark Office (USPTO) has upheld the right of the Broad Institute of MIT and Harvard to the genome-editing tool CRISPR/Cas9.

In a judgment issued last week, the USPTO held that there was no 'interference' between the Broad Institute's patents and those from a separate application made by researchers at the University of California (UC), Berkeley.

In May 2015, UC Berkeley applied for an interference proceeding to strike out ten patents issued to Professor Feng Zhang at the Broad Institute the previous year (see BioNews 802). It argued that the patents overlapped with a separate patent application made by Professor Jennifer Doudna at UC Berkeley, who along with Professor Emmanuelle Charpentier was the first to invent the technology, as they described in a 2012 paper (see BioNews 881).

The Broad, on the other hand, claimed that its patents were concerned specifically with the use of CRISPR/Cas9 in eukaryotic cells and, as such, were distinct from the broader application made by UC Berkeley. It said the move from Professor Doudna's work altering the DNA of bacteria to the use of CRISPR/Cas9 in more complex, eukaryotic cells in plants, animals and humans was not 'obvious', as UC Berkeley had argued.

The USPTO agreed that the Broad's invention was distinct and upheld its patents, thereby also moving the UC Berkeley patents closer to being issued.

In a statement, the Broad Institute welcomed the judgment: 'We agree with the decision by the patent office, which confirms that the patents and applications of Broad Institute and UC Berkeley are about different subjects and do not interfere with each other.'

UC Berkeley was more ambivalent, commending the decision in so far as it increased the likelihood that the patents for Professor Doudna's technology would be accepted – which UC Berkeley believes will cover not just the use of CRISPR/Cas 9 in bacteria, but also its use in plants, animals and humans. As Professor Doudna explained, 'They [the Broad Institute] have a patent on green tennis balls; we will have a patent on all tennis balls.'

Following the ruling, shares in Editas Medicine, which holds licences to the Broad patents, increased by 29 percent, reports The New York Times. In contrast, licensees of Professor Doudna's intellectual property fared less well, with Intellia Therapeutics and Crispr Therapeutics each falling by almost 10 percent.  

These companies may now have to pay to access the Broad Institute's patents. Alternatively, biotech companies may be required to pay both the Broad Institute and Doudna for access to their intellectual property.

Speaking to Nature News, Kevin Noonan, partner at McDonnell, Boehnen Hulbert & Berghoff, said that the judgment could create problems for those working in the field. 'Everybody [got] to keep their patents,' he said. 'This is maximum uncertainty for people because you don't know if you have to get licences from both sides.'

It is also not yet clear if UC Berkeley intends to appeal the ruling. A spokesman for UC Berkeley confirmed that it believes that the technologies were still not distinct, and reaffirmed the university's commitment to 'carefully consider all possible legal options', although its lawyer, Lynn Pasahow, said that UC Berkeley has yet to make a decision. It has two months in which to decide whether to appeal.

Nature News also points out that European patents over CRISPR/Cas-9 are still not settled and that the European Patent Office might choose to take a different view from the USPTO.

RELATED ARTICLES FROM THE BIONEWS ARCHIVE

30 October 2017 - by Jennifer Willows 
The Broad Institute has filed arguments ahead of the upcoming CRISPR patent appeal hearing...
31 July 2017 - by Dr Rachel Brown 
The University of California has moved to appeal a decision of the US Patent Trial and Appeal Board over the use of CRISPR in eukaryotic cells...
17 July 2017 - by Kulraj Singh Bhangra 
The Broad Institute of Massachusetts Institute of Technology and Harvard will take part in an initiative to simplify licensing CRISPR genome editing technology to other organisations and institutions...
03 July 2017 - by Rachel Siden 
China's State Intellectual Property Office has granted the University of California a patent on CRISPR-Cas9 gene editing technology in the country.
03 April 2017 - by Jennifer Willows 
The European Patent Office has declared that it intends to grant a broad patent for the use of CRISPR technologies to the University of California, the University of Vienna and Dr Emmanuelle Charpentier of the Max-Planck Institute in Berlin...

12 December 2016 - by Antony Blackburn-Starza 
Oral arguments from lawyers acting for the Broad Institute and the University of California, Berkeley, in the high-profile CRISPR/Cas9 patent dispute have been heard in Virginia...
22 August 2016 - by Chee Hoe Low 
A former MIT visiting student who worked in the Zhang lab for nine months in 2011 has claimed that patents over the CRISPR genome-editing technology were 'mis-patented'...
25 January 2016 - by Antony Blackburn-Starza 
An article published in the journal Cell, providing an account of the discovery of the genome-editing technology CRISPR, has sparked fierce disagreement between the leading scientists involved in developing the technology....
18 January 2016 - by Antony Blackburn-Starza 
The CRISPR 'patent wars' have now officially kicked off in the USA, with formal proceedings to determine who controls key patents over the revolutionary genome-editing technology...
18 May 2015 - by Ari Haque 
Patents for the gene-editing technology, CRISPR/Cas9, are the subject of a dispute between scientists at University of California, Berkeley and the Broad Institute of MIT and Harvard....

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