Roll Call: Are all Inventors Accounted for in a Foreign Filing with the EPO?November 24, 2020

Earlier this month, the European Patent Office (“EPO”) explained why it upheld a decision revoking a patent applied for by Broad Institute of Massachusetts Institute of Technology (MIT) and Harvard (“Broad Institute”) related to CRISPR gene editing. In particular, the decision cited a lack of novelty due to an invalid claim to priority—for inadvertently failing to list all the inventors from the priority application—highlighting the grave consequences associated with simple technical errors.

In January 2020, the European Patent Office Board of Appeal (“Board”) reviewed a 2018 decision from the EPO’s opposition division finding that Broad Institute’s patent was not novel. The patent at issue was EP 2 771 468, titled “Engineering of Systems, Methods and Optimized Guide Composition for Sequence Manipulation.” The original patent application was filed in the United States, with four named inventors. However, when the patent was filed in Europe through international patent procedures, one of the inventors was not included on the subsequent European application.

Due to the failure of Broad Institute to list all the inventors, the EPO’s opposition division held that the patent was not entitled to its priority date. As a result, prior art—which would not have been considered prior art with a proper priority claim—became relevant, over which the claimed invention was deemed to be not novel. The Broad Institute indicated that this decision may affect nine of its 21 European patents covering CRISPR, stressing that the issue was technical, and not involving the actual scientific merits of the patent application. However, the EPO explained that the laws on issues of priority are well established and found no grounds for deviating from its longstanding practice.

The Broad Institute has been engaged in a contentious battle over CRISPR patents, particularly with the University of California, over which party was the first to invent the breakthrough technology. Therefore, the loss of priority for potentially multiple patents in Europe, serves as a detrimental loss to the Broad Institute. Hopefully, this case serves as a reminder to all practitioners to exercise extreme caution when filing applications, especially with respect to verifying priority claims.

A copy of the Board’s decision may be found here