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Dispute resumes as US patent office re-examines CRISPR invention

1 July 2019
Appeared in BioNews 1004

The US patent office has declared an 'interference' – re-opening the long-running dispute between the University of California (UC), Berkeley and the Broad Institute in Cambridge, Massachusetts, over who invented CRISPR genome editing first.

In February, the six-year fight over CRISPR patent rights seemed to have been settled, with the US patent office awarding a key patent to UC. Now, based on claims made by UC in April 2018 (see BioNews 948), the US patent office has initiated an interference – a legal procedure that aims to resolve a conflict between two or more patent applications filed on the same invention. 

The US Patent and Trademark Office will examine ten patent applications of UC and 13 patents and one pending application of the Broad to determine which institution first invented the relevant CRISPR technology in eukaryotes – the cells of animals and plants. This has significant implications because of the billions of dollars that could be made by patent holders licensing CRISPR for use in agriculture and medicine. Both institutions welcomed the move. 

'This is all good news for UC,' said Dr Eldora Ellison, the university's outside patent counsel. 'We expected that the office would declare an interference, so they could determine who was first to invent the use of CRISPR in eukaryotes.'

In a statement, the Broad said that the interference challenges the validity of UC's eukaryotic claims. It also observed that as the junior party, UC 'carries the burden of proof' and will have to clearly demonstrate that the Broad team did not invent the eukaryotic use of CRISPR. 

In 2012, Professor Jennifer Doudna at UC and Professor Emmanuelle Charpentier filed a patent for the discovery of CRISPR's ability to edit purified DNA in vitro. Subsequently, researchers including Professor Feng Zhang at the Broad Institute were granted a patent based on the use of CRISPR to edit the genomes of eukaryotic cells. In recent years, each institution has filed multiple patent applications and has been awarded overlapping rights by the US and European patent offices, adding complexity to the case (see BioNews 967 and 954). 

The biotechnology industry has pushed for the institutions to reach a deal such as a patent pool, that would manage the licence rights held by both the UC and the Broad as a package. Catherine Coombes, a UK patent attorney who deals with CRISPR and does not represent the Broad or UC, said: 'Given the complexity of the landscape, and as the thicketing of the landscape continues, the desire to get some form of collaboration for licensing only enhances for third parties.'

The parties will first discuss the interference on 5 August, in a conference call with the US Patent Trial and Appeal Board.

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