Given the revolutionary nature of the CRISPR-Cas9 technology, UC believes that obtaining a timely confirmation that its scientific team was the first to invent the use of the technology in all environments, including eukaryotic cells, is important for current and potential users of the technology, including academia, industry and the public at large.
In parallel, UC intends to pursue continuing applications in the U.S. and globally to obtain patents claiming the CRISPR-Cas9 technology and its application in non-cellular and cellular settings, including eukaryotic cells. Corresponding patents have already been granted to UC in the United Kingdom, and the European Patent Office has announced that it will grant UC’s patent on May 10, 2017.The Broad Institute has issued a statement on the appeal:
UCB has filed a Notice of Appeal asking the United States Court of Appeals for the Federal Circuit, based in Washington DC, to review the recent decision by the PTAB (Patent Trial and Appeals Board) that there is no interference between the Broad Institute, MIT and Harvard claims concerning the use of the CRISPR system in eukaryotic cells and the patent application of UCB because the claims are patentably distinct.
Given that the facts have not changed, we expect the outcome will once again be the same.
We are confident the Federal Circuit will affirm the PTAB decision and recognize the contribution of the Broad, MIT and Harvard in developing this transformative technology.The Federal Circuit can review the PTAB ruling for any error or law or lack of substantial evidence, but will defer to the factual findings from the board. If the ruling is left in place, UC can still move ahead with its patent application to the use of CRISPR in all cells. Theoretically, such a UC patent could coexist with the Broad patent to the use of CRISPR in eucaryotic cells. A potential user might then have to seek permission or license from both patent holders to use the CRISPR system in eucaryotic cells. The parties themselves (UC, Broad) might need to seek cross-licensing from each other to utilize CRISPR in eucaryotic cells. While the current dispute centers on the specific and valuable CRISPR-Cas9 system, other permutations of the CRISPR methodology can utilize different enzymes (e.g., CRISPR-Cpf1) and are therefore separately eligible for patenting, unconnected to this particular UC/Broad conflict.