CRISPR: Broad Institute Holds onto its Piece of Pie, and it’s Delicious!September 13, 2018

On Monday, September 10th, the Court of Appeals for the Federal Circuit (CAFC) upheld the decision from the Patent Trial and Appeal Board (PTAB) on the interference between the Broad Institute and the University of California. The PTAB held, and the CAFC upheld, that given the difference between prokaryotic and eukaryotic cells, one skilled in the art would not have had a reasonable expectation of success in CRISPR-Cas9 working in eukaryotic cells. With this, the court continued that the UC claims did not render Broad’s claims obvious, so there was no interference-in-fact. The CAFC also pointed out that they were only ruling on the appeal of the interference and not on the validity of either set of claims. Perhaps opening the door for further challenges.

The CAFC holding means that Broad’s claims to using CRISPR for eukaryotic still remain valid and distinct from the UC claims, which are still pending. Therefore, absent a Supreme Court grant ofcertierorai, it is likely Broad will retain the patents for CRISPR-Cas9 in eukaryotic cells while UC will be able to claim prokaryotic cells. This should provide some certainty for individuals, universities, or companies looking to license CRISPR-Cas9. Previously, it was unclear if an entity was conducting research in eukaryotic cells whether they should obtain a license from Broad, UC or both!

This licensing was especially critical for universities and other non-profit organizations as Broad, along with DuPont Pioneer, were allowing non-exclusive, free licenses for the use of CRISPR-Cas9 for academic research. This agreement provides access to IP from the Broad and co-owned with collaborators, such as MIT and the University of Iowa, among others. UC, and Caribou Bioscience, Inc. which was co-founded by Dr. Jennifer Doudna of UC Berkeley, has not joined this patent pool and were not allowing non-exclusive, free licenses for their IP.

After this holding by the CAFC, UC may be encouraged to join the patent pool as the patents and applications held by Broad and others to eukaryotic cells are arguably the more valuable of the two cell types. The entire decision can be round here.

Oliver P. Couture is an Intellectual Property Attorney in the Biotechnology & Chemical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Oliver directly via email at oliver.couture@ipmvs.com.

 

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