The CRISPR patent dispute – Europe and the US – BioNews
Posted: May 2, 2017 at 4:43 pm
Brian Nolan is a partner in the Life Sciences Group of Mayer Brown LLP.
The European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) have been thrust into a dispute pitting the University of California, Berkeley (UC) and the University of Vienna against the Broad Institute of MIT and Harvard University. The patent applications in the dispute disclose the genome editing tool called CRISPR/Cas9. Scientists and inventors have been watching the decisions of the EPO and USPTO because these decisions may leave one of these entities with a patent portfolio worth billions of dollars.
The Broad Institute scored the first victory at the USPTO, which held that the Institute is entitled to claims for the use of CRISPR-Cas9 in eukaryotic cells because that use is patentably distinct from UC's earlier disclosure showing the ability to use CRISPR-Cas9 in vitro. But just a few weeks later, the EPO informed the public that it intends to issue a patent to UC for the use of CRISPR-Cas9 in either prokaryotic or eukaryotic cells.
The CRISPR-Cas9 genome editing system finds its scientific roots in the observation that prokaryotes utilise CRISPR to identify and destroy viruses. Professor Jennifer Doudna of UC and Professor Emmanuelle Charpentier of the University of Vienna showed that the CRISPR-Cas9 system could use short strands of guide RNA that recognize and direct Cas9 to locate a specific target DNA sequence, and to cut it. In four preliminary patent applications filed between May 2012 and February 2013 and a related scientific paper published on 17 August, 2012, Professor Doudna and her colleagues Dr Martin Jinek of UC and Professor Charpentier disclosed a successful test of a prokaryotic CRISPR-Cas9 genome editing tool in vitro.
Around the same time, Dr Feng Zhang, a scientist at the Broad Institute, was working on creating and using various bacterial Cas9 in mammalian cells. Between December 2012 and June 2013, a few months after Professor Doudna and Dr Charpentier's publication, Professor Zhang and his colleagues filed several provisional patent applications showing the use of CRISPR-Cas9 with human and mouse cells. Professor Zhang and his colleagues requested and paid for expedited review. The expedited review resulted in US patents being issued to Professor Zhang and colleagues before the issuance of patents to Professor Doudna and her colleagues.
UC and the Broad Institute have been watching the progression of each other's patent applications through the USPTO and EPO. When UC saw that the USPTO had issued patents to the Institute for the use of CRISPR-Cas9 in eukaryotic cells, UC requested that the USPTO decide whether UC's patent disclosure showing the use of CRISPR-Cas9 genome editing system in vitro in prokaryotic cells evidenced that using CRISPR-Cas9 in eukaryotic cells was UC's invention. The USPTO instituted a proceeding called an 'interference' to review the parties' claims.
During this proceeding, UC alleged that Zhang's work was an obvious extension of that shown in Professor Doudna's article. Based upon an email from a former member of Professor Zhang's laboratory, Shuailiang Lin, to Professor Doudna, UC asserted that Professor Zhang began only meaningfully working on CRISPR-Cas9 after reading that article. The Institute responded by characterizing the email as that of a former employee seeking a new job and willing to tell a prospective employer what they wanted to hear.
In response to this, the Broad Institute responded that the USPTO should not have instituted this proceeding because its patent claims are distinct from UC's patent applications, which only show success of CRISPR-Cas9 in vitro. In February, the USPTO ruled in the Broad Institute's favour and held that 'the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference. [The] Broad [Institute] provided sufficient evidence to show that its claims, which are all limited to CRISPR-Cas9 systems in a eukaryotic environment, are not drawn to the same invention as UC's claims, which are all directed to CRISPR-Cas9 systems not restricted to any environment.'
The USPTO came to this conclusion because it determined that the evidence showed that a person of ordinary skill in the art would not have a reasonable expectation that CRISPR-Cas9 could be implemented successfully in a eukaryotic cell based upon the success UC achieved in vitro. To support its conclusion, the USPTO pointed to several statements by Professor Doudna and Dr Jinek, the UC inventors, that questioned whether the CRISPR-Cas9 genome editing system could be implemented in a eukaryotic environment. UC has appealed the USPTO's decision to a United States appellate court. Yet as the appellate court will make its decision on the same record presented to the USPTO, it may be difficult for UC to convince the appellate court that substantial evidence did not support the USPTO's determination. The appeal should be resolved with 10-12 months.
In parallel with the USPTO's review, the EPO was considering what, if any, patent protection it should grant UC. UC's European patent application was the subject of great interest, as several third-party observations were submitted to the EPO seeking to impede the issuance of the patent. These observations included arguments that the UC patent publications did not support a claim scope that encompassed CRISPR in a eukaryotic environment, similar to those presented in the United States. Despite these submissions, the EPO has notified the public that it intends to issue a patent to UC for the use of CRISPR-Cas9 in either prokaryotic or eukaryotic cells. Within nine months of issuance, this patent may be the subject of third-party oppositions that challenge whether the patent should have issued. If filed, an opposition will afford the third-party a substantive role in the arguments before the EPO than it had before, similar to the procedure in the US where a third-party cab remain involved during an interference proceeding. This may increase the likelihood of the EPO questioning a claim scope that includes use in a eukaryotic cell.
Either way, the EPO will be unlikely to resolve an opposition until late 2018 or 2019; so as with the patent situation in the United States, the dispute will continue in Europe. Unless the parties enter into a settlement, the industry should expect uncertainty with respect to ownership of the use of CRISPR-Cas9 in eukaryotic cells for the next two to four years, with the potential for various disputes to erupt in the patent offices and courts of the United States and Europe.
The decisions of the USPTO and the EPO to grant rights to the use of CRISPR-Cas9 systems in a eukaryotic cell to different parties has complicated commercialisation decisions for biopharma companies. It is thought that the more lucrative uses for CRISPR-Cas9 will be in a eukaryotic environment. Thus, if the status quo remains, throughout the duration of the patents that may last until 2033, companies will have to secure licensing rights from both UC and the Broad Institute if they plan on commercialising products in both the United States and Europe which is the likely plan for biopharma companies. Therefore, biopharma companies will continue to watch these CRISPR-Cas9 patent disputes until either the disputes are resolved - or a significantly different CRISPR system becomes the genome editing tool of choice.
View post:
The CRISPR patent dispute - Europe and the US - BioNews
- 'CRISPR pill' instructs harmful bacteria to self-destruct - National Hog Farmer [Last Updated On: April 26th, 2017] [Originally Added On: April 26th, 2017]
- Highly sensitive CRISPR diagnostic tool created - BioNews [Last Updated On: April 26th, 2017] [Originally Added On: April 26th, 2017]
- More Tooth, More Tail in CRISPR Operations | GEN - Genetic Engineering & Biotechnology News (press release) [Last Updated On: April 26th, 2017] [Originally Added On: April 26th, 2017]
- Quick, Sensitive Diagnostic Tests with CRISPR - Technology Networks [Last Updated On: April 26th, 2017] [Originally Added On: April 26th, 2017]
- MPEG LA Invites CRISPR-Cas9 Patents to be Pooled in a One-Stop License - Yahoo Finance [Last Updated On: April 26th, 2017] [Originally Added On: April 26th, 2017]
- What Is CRISPR? - livescience.com [Last Updated On: April 26th, 2017] [Originally Added On: April 26th, 2017]
- CRISPR and Stem Cells Identify Novel Chlamydia Drug Targets - Genetic Engineering & Biotechnology News [Last Updated On: April 26th, 2017] [Originally Added On: April 26th, 2017]
- CRISPR webinar: HGF discusses IP landscape - Life Sciences Intellectual Property Review (subscription) [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- CRISPR.com was for sale, and you won't guess who bought it - STAT [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- CRISPR Pill May Be Key in Fight Against Antibiotic Resistance - Singularity Hub [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- Intellia (NTLA), CRISPR Therapeutics (CRSP) Receive U.S. Patent for CRISPR/Cas9 Ribonucleoprotein Complexes - StreetInsider.com [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- transOMIC technologies Launches transEDIT-dual CRISPR ... - PR Newswire (press release) [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- Global CRISPR Market Forecast 2017-2025 - Research and Markets ... - Business Wire (press release) [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- Quick, Sensitive Diagnostic Tests with CRISPR | Technology Networks - Technology Networks [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- CRISPR/Cas9 and Targeted Genome Editing: A New Era in ... [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- CRISPR - Wikipedia [Last Updated On: April 27th, 2017] [Originally Added On: April 27th, 2017]
- CRISPR Used To Modify Multiple Genes In Rice - Asian Scientist Magazine [Last Updated On: April 28th, 2017] [Originally Added On: April 28th, 2017]
- Current CRISPR Patent Dispute, Explained - CALIFORNIA [Last Updated On: April 28th, 2017] [Originally Added On: April 28th, 2017]
- CEOs of top gene-editing firms got huge compensation hikes last year - Boston Business Journal [Last Updated On: April 28th, 2017] [Originally Added On: April 28th, 2017]
- CRISPR-SMART Cells Regenerate Cartilage, Secrete Anti-Arthritis Drug - Genetic Engineering & Biotechnology News [Last Updated On: April 29th, 2017] [Originally Added On: April 29th, 2017]
- Another CRISPR Trial Begins - GenomeWeb [Last Updated On: April 29th, 2017] [Originally Added On: April 29th, 2017]
- China Is Racing Ahead of the US in the Quest to Cure Cancer With CRISPR - Gizmodo [Last Updated On: April 29th, 2017] [Originally Added On: April 29th, 2017]
- CRISPR Gene Editing - CRISPR/Cas9 - Horizon Discovery [Last Updated On: May 1st, 2017] [Originally Added On: May 1st, 2017]
- CRISPR | Broad Institute [Last Updated On: May 1st, 2017] [Originally Added On: May 1st, 2017]
- Questions and Answers about CRISPR | Broad Institute [Last Updated On: May 1st, 2017] [Originally Added On: May 1st, 2017]
- CRISPR Genome Engineering Resources | learn, share, and discuss [Last Updated On: May 1st, 2017] [Originally Added On: May 1st, 2017]
- CRISPR Technology Scientists on Their Gene Editing Tool - TIME [Last Updated On: May 1st, 2017] [Originally Added On: May 1st, 2017]
- Cas9 - Wikipedia [Last Updated On: May 1st, 2017] [Originally Added On: May 1st, 2017]
- Using CRISPR against cancer shows success in mice - Futurity - Futurity: Research News [Last Updated On: May 2nd, 2017] [Originally Added On: May 2nd, 2017]
- Using CRISPR to Find Treatments for Aggressive Pediatric Brain Cancer - Bioscience Technology [Last Updated On: May 2nd, 2017] [Originally Added On: May 2nd, 2017]
- CRISPR Eliminates HIV in Live Animals - Genetic Engineering & Biotechnology News [Last Updated On: May 2nd, 2017] [Originally Added On: May 2nd, 2017]
- How Scientists Think CRISPR Will Change Medicine - TIME [Last Updated On: May 3rd, 2017] [Originally Added On: May 3rd, 2017]
- What you need to know about the legal battle over CRISPR patents - Genetic Literacy Project [Last Updated On: May 4th, 2017] [Originally Added On: May 4th, 2017]
- Scientists have eliminated HIV in mice using CRISPR - TechCrunch [Last Updated On: May 4th, 2017] [Originally Added On: May 4th, 2017]
- CRISPR Therapeutics Appoints Samarth Kulkarni, Ph.D. as President, Expanding Role Beyond Chief Business Officer ... - GlobeNewswire (press release) [Last Updated On: May 4th, 2017] [Originally Added On: May 4th, 2017]
- ECDC says risk from contaminated CRISPR kits low - CIDRAP [Last Updated On: May 4th, 2017] [Originally Added On: May 4th, 2017]
- CRISPR Could Transform the Way We Diagnose Disease - Gizmodo [Last Updated On: May 4th, 2017] [Originally Added On: May 4th, 2017]
- A cancer gene also grows stem cells, CRISPR in monkey embryo ... - Speaking of Research [Last Updated On: May 5th, 2017] [Originally Added On: May 5th, 2017]
- New CRISPR Technique Can Potentially Stop Cancer In Its Tracks - Wall Street Pit [Last Updated On: May 6th, 2017] [Originally Added On: May 6th, 2017]
- CRISPR gene-editing tool targets cancer's "command center" - Gizmag - New Atlas [Last Updated On: May 7th, 2017] [Originally Added On: May 7th, 2017]
- Update: CRISPR - Radiolab [Last Updated On: May 7th, 2017] [Originally Added On: May 7th, 2017]
- Cambridge gene editing firm CRISPR to use delivery tech honed ... - Boston Business Journal [Last Updated On: May 9th, 2017] [Originally Added On: May 9th, 2017]
- Oxford Genetics licenses CRISPR tech to power synbio push - FierceBiotech [Last Updated On: May 10th, 2017] [Originally Added On: May 10th, 2017]
- What You Need to Know About the New CRISPR Cancer Treatment - BOSS Magazine [Last Updated On: May 11th, 2017] [Originally Added On: May 11th, 2017]
- CRISPR: The Future of Medicine and Human Evolution - in-Training [Last Updated On: May 12th, 2017] [Originally Added On: May 12th, 2017]
- Intellia Therapeutics Announces Progress with CRISPR/Cas9 at the American Society of Gene & Cell Therapy Annual ... - GlobeNewswire (press... [Last Updated On: May 13th, 2017] [Originally Added On: May 13th, 2017]
- Pac-Man like CRISPR enzymes discovered - Lab News [Last Updated On: May 13th, 2017] [Originally Added On: May 13th, 2017]
- Coming age of CRISPR gene editing: What in heck is the 'Pink Chicken Project'? - Genetic Literacy Project [Last Updated On: May 15th, 2017] [Originally Added On: May 15th, 2017]
- Intellia moves closer to clinic with CRISPR tech - FierceBiotech [Last Updated On: May 15th, 2017] [Originally Added On: May 15th, 2017]
- Will CRISPR Technology Create a New "Human" Species? - Big Think [Last Updated On: May 15th, 2017] [Originally Added On: May 15th, 2017]
- Caribou Bioscience's CEO on CRISPR's legal and ethical challenges - TechCrunch [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- Cut Out the Hype: Gene Editing With CRISPR and the Truth about Superhuman 'Designer Babies' - WhatIsEpigenetics.com (blog) [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- CRISPR-Cas.org [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- Synthego's genetic toolkit aims to make CRISPR more accessible - TechCrunch [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- What is CRISPR? A Beginner's Guide | Digital Trends [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- Geneticists Enlist Engineered Virus and CRISPR to Battle Citrus Disease - Scientific American [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- Editas delays IND for Allergan-partnered CRISPR program - FierceBiotech [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- Easy DNA Editing Will Remake the World. Buckle Up - WIRED [Last Updated On: May 16th, 2017] [Originally Added On: May 16th, 2017]
- Can CRISPR feed the world? - Phys.org - Phys.Org [Last Updated On: May 19th, 2017] [Originally Added On: May 19th, 2017]
- Gene-editing tool 'CRISPR' gaining massive attention - KMOV.com [Last Updated On: May 19th, 2017] [Originally Added On: May 19th, 2017]
- Fixing the tomato: CRISPR edits correct plant-breeding snafu - Nature.com [Last Updated On: May 19th, 2017] [Originally Added On: May 19th, 2017]
- Beyond just promise, CRISPR is delivering in the lab today - The Conversation US [Last Updated On: May 20th, 2017] [Originally Added On: May 20th, 2017]
- What is CRISPR-Cas9, and will it change the world? | Alphr - Alphr [Last Updated On: May 20th, 2017] [Originally Added On: May 20th, 2017]
- Fixing the Tomato: CRISPR Edits Correct Plant-Breeding Snafu ... - Scientific American [Last Updated On: May 20th, 2017] [Originally Added On: May 20th, 2017]
- This UK Biotech uses CRISPR-Cas9 To Fight Bacterial Resistance - Labiotech.eu (blog) [Last Updated On: May 21st, 2017] [Originally Added On: May 21st, 2017]
- Can CRISPR feed the world? | Horizon: the EU Research ... - Horizon magazine [Last Updated On: May 21st, 2017] [Originally Added On: May 21st, 2017]
- Will this gene-editing tool cure the diseases of the future? - Sacramento Bee [Last Updated On: May 23rd, 2017] [Originally Added On: May 23rd, 2017]
- How the CRISPR-Cas9 System is Redefining Drug Discovery - Labiotech.eu (blog) [Last Updated On: May 23rd, 2017] [Originally Added On: May 23rd, 2017]
- Scientists are using gene editing to create the perfect tomato for your salad - Quartz [Last Updated On: May 24th, 2017] [Originally Added On: May 24th, 2017]
- Fine-tuning CRISPR to Create Popular Mouse Models - Technology Networks [Last Updated On: May 25th, 2017] [Originally Added On: May 25th, 2017]
- Scientists Are Using CRISPR To "Program" Living Cells - Futurism - Futurism [Last Updated On: May 25th, 2017] [Originally Added On: May 25th, 2017]
- CRISPR gene editing puts the brakes on cancer cells - Cosmos [Last Updated On: May 26th, 2017] [Originally Added On: May 26th, 2017]
- Watch This Scientist Brilliantly Explain CRISPR to Everyone from a Child to a Ph.D. - Patheos (blog) [Last Updated On: May 27th, 2017] [Originally Added On: May 27th, 2017]
- Using CRISPR gene editing to slow cancer growth | FierceBiotech - FierceBiotech [Last Updated On: May 27th, 2017] [Originally Added On: May 27th, 2017]
- How A Gene Editing Tool Went From Labs To A Middle-School Classroom - NPR [Last Updated On: May 27th, 2017] [Originally Added On: May 27th, 2017]
- In Just a Few Short Years, CRISPR Has Sparked a Research Revolution - Futurism [Last Updated On: May 29th, 2017] [Originally Added On: May 29th, 2017]
- CRISPR Is Taking Over Science, Breaks Out Of Labs And Invades Schools - EconoTimes [Last Updated On: May 30th, 2017] [Originally Added On: May 30th, 2017]
- Gene-editing technique scientists hope will cure cancer and all ... - The Independent [Last Updated On: May 30th, 2017] [Originally Added On: May 30th, 2017]
- CRISPR Gene-Editing Can Cause Hundreds of Unexpected ... - ScienceAlert [Last Updated On: May 30th, 2017] [Originally Added On: May 30th, 2017]
- CRISPR's Next Target: Wheat Kernels - Laboratory Equipment - Laboratory Equipment [Last Updated On: May 31st, 2017] [Originally Added On: May 31st, 2017]