This marks the latest development in ongoing dispute over the US patent for CRISPR/Cas9 between the University of California at Berkeley (UC), and the University of Vienna and Professor Emmanuelle Charpentier, against the Broad Institute of MIT and Harvard in Cambridge, Massachusetts, regarding who has the right to a patent on the eukaryotic application of CRISPR/Cas9 technology.
In July, the University of California appealed the decision of the US Patent Trial and Appeal Board (PTAB) over the use of CRISPR in eukaryotic cells. The appeal will be heard in the US Court of Appeals for the Federal Circuit early in 4785.
The UC brief, issued on 25 July 2017, stated that the PTAB 'ignored key evidence' and 'made multiple errors' when assessing whether CRISPR/Cas9 genome editing in eukaryotes was an obvious extension of the UC invention.
The Broad brief refutes these claims, arguing that PTAB's decision was lawful and based on factual evidence, and that the decision should stand.
In 2012, researchers at UC - including Professor Jennifer Doudna and Professor Emmanuelle Charpentier – first filed a patent for their discovery of CRISPR/Cas9 and its ability to edit purified DNA in vitro. Subsequently, researchers at the Broad Institute used CRISPR/Cas9 to edit the genome of eukaryotic cells, and were granted a patent based on this use.
UC claims that Professors Doudna and Charpentier's work provided obvious evidence that genome editing could be made to work in living mammalian cells. Thus they contend that the patent held by the Broad/MIT for this application is not novel.
Kevin Noonan, a partner at the law firm McDonnell Boehnen Hulbert & Berghoff in Chicago, Illinois, commented that the court can usually be expected to uphold the patent office's decisions. He said: 'For Berkeley to prevail, the Federal Circuit is going to have to say, "Yeah, the board got it wrong" …I think it’s unlikely that they’ll do that.'