Guest post by Lucia Tamayo Del Portillo*
After causing major buzz in 2017 due to the decision of the patent interference procedure before the United States Patent and Trademark Office (USPTO) which is currently under review in Federal Court, the Crispr Cas9 patent battle enters into 2018 with another shocking decision, this time rendered by the opposition division of the European Patent Office (EPO).
As readers may recall, Crispr Cas9 is a gene editing tool that allows scientists to manipulate DNA of living organisms in a cost-effective manner with accurate precision and the possibility to add, amend or delete parts of DNA sequences. The technology has multiple applications in different industries, with, of course, human health being the most promising and profitable one.
Two major institutions and research teams are disputing the IP rights over this technology, on one side The Broad Institute (Harvard/MIT) led by Dr. Feng Zhang and in the other UC Berkeley led by Dr. Jennifer Doudna and her colleague scientist Emmanuel Charpentier who´s now a researcher at the Max Planck Institute in Berlin. The battle is taking place in major jurisdictions, and just last year the USPTO declared that the subject matter covered by the patents filed by the parties did not overlap which allowed their co-existence. Of course, this decision was not final, and we shall expect to have a new episode of this saga in the U.S.
Similar to the American situation, both parties have patents and pending patent applications filed before the European Patent Office.
The Broad Institute was the first to obtain a patent granted by the EPO; however, several oppositions were launched against this favorable decision. On Wednesday, January 18, 2018, the Broad Institute was officially served with the decision of the opposition division, which revoked the grant based on a formal aspect of the patent application. In its decision, the division considered that the patent did not meet the requirements to validly benefit from the priority date. As a consequence, the date in which prior art is determined as per Article 54 of the European Patent Convention will not be the one of the first invoked priority, which lead to lack of novelty of the patent.
The decision was not unexpected at all since the Broad patents have been severely criticized due to the fact that they have major inconsistencies in relation to the intervening inventors. These features are reviewed in a very strict manner under European patent law as opposed to other jurisdictions. Guidelines for examination specifically request: -“that the applicant for the European patent was the applicant, or is the successor in title to the applicant, who made the previous application.” -The difference between the inventors and the requesting parties definitely had a significant impact, in this case, showing us that formal aspects are as relevant as substantive ones.
An appeal has already been filed by Broad´s EU lawyers, and formal press statements have been made disclosing their primary line of defense. Here the argumentation will gravitate towards a crucial matter in relation to the interpretation and applicability of international patent law treaties as well as the obligations of contracting parties.
The decision by the opposition division seems contrary to the Paris Convention and opens the debate on the flexibility that contracting parties have as to set further requirements for patent applicants to validly obtain priority rights. Without question, the decision that the Board of Appeal of the EPO will have to render is going to reshape patent law as we know it.
For the time being, both UC Berkeley and the Broad Institute continue to expand their patent portfolio over Crispr and subsequent improvements which can ultimately result in a cross-license situation. Nevertheless, the patent battle continues and will carry on for a while, making this a very interesting topic for discussion and debate at least for the time being.
*Lucia Tamayo Del Portillo has a law degree from Universidad de Los Andes, in Bogota, Colombia and holds an LL.M. on Intellectual Property and Competition Law from the Munich Intellectual Property Law Center in Germany. She has been practicing in IP for almost five years, and has practical experience in international firms such as Jones Day. Currently she works as an associate at the patent department of Colombian law firm Lloreda Camacho & Co.