The EPO Revokes Broad Institute’s CRISPR Patent Citing Lack of Novelty
In a decision that could potentially affect several other European patents, the EPO has now revoked a patent relating to CRISPR-Cas9 genome editing technology which had been granted to the Broad Institute, MIT and Harvard University.
The patent, known in other jurisdictions as US 20140242664 A1 and WO 2014093712 A1, among other designations, is titled “Engineering of systems, methods and optimized guide compositions for sequence manipulation,” and claimed a priority date of Dec. 12, 2012. It is one of the foundational patents claimed by the Broad Institute, based on Feng Zhang’s work in translating the CRISPR/Cas9 genome editing tools to a eukaryotic background.
In addition to the highly publicized patent dispute between the Broad and the University of California over the rights to CRISPR gene editing in the U.S., the Broad has been fighting to maintain a number of patents over the technology in Europe.
The issue revolves around a disagreement between the Broad and Rockefeller University over who should be named as inventors. The majority of patent applications filed by the Broad in Europe failed to name Rockefeller University itself, as well as Rockefeller researcher Luciano Marraffini, both of which were named
on several of the documents filed to establish a priority date for the patent as early as December 2012.It was overturned on a technicality, based on the omission of Luciano Marraffini, who was originally named as co-inventor on earlier filings but omitted from later filings following the emergence of an IP dispute – since settled – between the two institutions.
To claim priority in Europe, patent applications must satisfy several conditions including that the applicant for the European patent was also the applicant, or successor in title to the applicant, on the previous application.
The ruling may not affect ownership of CRISPR IP in the U.S., where the Broad was issued the first patent covering the use of CRISPR-Cas9 in eukaryotic cells in a decision that was upheld after challenge in an interference proceeding.
Broad wrote in its statement that it is confident the EPO will use the case “as an opportunity to review and resolve this international inconsistency” and, on appeal, will recognize “the same priority dates for the inventions as those the USPTO has repeatedly affirmed for the Broad’s U.S. applications.”
But the likelihood that EPO will reverse course is “slim,” says Catherine Coombes, a patent attorney with HGF Limited in York, U.K., who has handled some CRISPR-related litigation but is not involved with what she refers to as “the foundational” intellectual property at the center of these disputes.
