May 30, 2018

Second International Summit on Human Genome Editing Announced for 2018

Over the last several years, the genome editing field (exemplified by the CRISPR-Cas9 technology) has rapidly expanded to all manner of applications in medicine, agriculture, environment, etc. The attention to legal, regulatory, and bioethical implications of this powerful new technology has grown in parallel. The U.S. National Academies of Science and Medicine launched the Human Genome Editing Initiative in 2015. Most notably, the First International Summit on Human Gene Editing was organized by several national science academies, and took place in December, 2015 (consensus statement here) (see earlier post). Now, 3 years later, the Second International Summit on Human Genome Editing has been announced by a group of science academies (U.S., U.K., and Hong Kong). The summit will take place on Nov. 27-29, 2018, at the University of Hong Kong, and will be webcast live. The organizers issued this statement of purpose:
    The science of human genome editing has advanced rapidly since the first international summit was held in 2015 in Washington, D.C. An explosion of new research is employing CRISPR/Cas9 and other powerful, precise editing tools, and clinical trials are planned for applications to treat diseases. However, many questions remain unanswered concerning the science, application, ethics, and governance of human genome editing. Of particular concern is the possibility of genome editing that might lead to heritable alterations, and applications for purposes other than to treat diseases or disabilities.
    The Second International Summit on Human Genome Editing will continue to advance the global discussion on these issues by bringing together a broad range of stakeholders – including researchers, ethicists, policy makers, patient groups, and representatives from science and medical academies and organizations worldwide. Participants will examine issues including:
•    scientific advances that have been made since the 2015 summit;
•    progress in the study of non-heritable genome editing to treat diseases;
•    the state of the science for genome editing in germline cells and the potential for clinical applications;
•    efforts to address technical challenges identified at the 2015 summit;
•    prospects for developing international regulatory frameworks;
•    ethical and societal issues surrounding the pursuit of human genome-editing applications; and
•    efforts to engage the public.
    This second summit will focus global attention on the rapid technological pace of the field, and can draw on 3 more years of research since the 2015 gathering. In 2018, there is more clarity on the scientific challenges of the technology. There is also more technical heterogeneity in the field, such as the development of more precise versions of the Cas9 enzyme in the CRISPR-Cas9 system. Finally, the scope of applications for genome editing techniques is broadening all the time, and the 2018 snapshot will reveal just how widely the technology has shaped modern biological science.

May 15, 2018

Federal Circuit Hears UC Appeal of Interference Ruling on CRISPR Patent Rights

    The long running patent dispute between two leading players in the development of the genome editing CRISPR-Cas9 (CRISPR) technology has finally reached the Federal Circuit. On April 30, 2018, the University of California, Berkeley (UC) and the Broad Institute of MIT (Broad) met at the court to argue inventorship rights in foundational patents on methods for the use of CRISPR technology.
    Briefly, the first-filed UC patent application to Jennifer Doudna, Emmanuelle Charpentier and their colleagues is directed to methods for the use of CRISPR in all cells. A later-filed application by Feng Zhang and his colleagues at the Broad resulted in an issued patent for the use of CRISPR in eukaryotic cells (includes human and animal cells). Between these two rivals, the UC scientists were first to publish on the CRISPR technology in the scientific literature.
    Historically, U.S. patent law, requiring the issuance of a patent to the first inventor, has had a mechanism for identifying the first inventor where two separate applicants file for a patent on overlapping subject matter, known as an interference proceeding. The 2011 America Invents Act (AIA) instituted a first inventor to file regime, which largely eliminated the need for interferences. These CRISPR patent applications were filed before the effective date of the AIA in 2013, and are thus subject to the older regime. Thus, the patent rights to one of the most important advances in biotechnology are being sorted out according to the now-discarded first inventor paradigm of U.S. patent law. UC requested an interference proceeding from the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), believing that the Broad application covered the same subject matter as their own patent application and was therefore not valid (asserting that eukaryotic cells are a subset of all cells, and fall within the scope of the UC patent).
The UC argument is that their patent application is prior art to the Broad patent, and provided enough information to allow other scientists to use CRISPR in eukaryotic cells with a “reasonable expectation of success.” UC asserted that the Broad subject is therefore obvious and not patentable. The PTAB declared an interference in 2016 (more background here).
    In early 2017, the PTAB ruled that there were no conflicting patent rights (no interference) between the pending UC patent application and the already issued Broad patents. According to the PTAB, the Broad patent was not obvious in view of the UC patent application. Therefore, the existing grant of patents to the Broad for the use of CRISPR in eukaryotic cells was upheld, and the UC application for the use of CRISPR in all cells could continue prosecution. Effectively, this was a win for Broad. UC then appealed the PTAB decision to the Federal Circuit.

    In the oral argument at the Federal Circuit on April 30th, the dispute centered on whether the PTAB applied the correct evidentiary standard to the determination of nonobviousness, and whether it properly considered all available evidence in its review. The PTAB had found that there was enough uncertainly about the technology in the 2012 time frame that the Broad scientists had no “reasonable expectation of success” and its work in eukaryotic cells was nonobvious; UC argued that the PTAB misapplied the obviousness standard.
    It appears that the Federal Circuit may be likely to affirm the ruling of the PTAB. Looking forward, it is possible that the coexistence of a UC patent (upon issuance) and the Broad patents could require licenses from both patent holders for the use of CRISPR in eukaryotic cells by third parties, and cross-licenses between the patent holders for such use. The fate of patent rights to one of the most important biotechnologies in decades could soon be clarified. Depending on the ruling, a Supreme Court appeal could follow; however, it is unlikely that the Court would take the case.