Broad Institute wins bitter battle over CRISPR patents

HGF's Catherine Coombes has firmly established herself as the go to commentator on all matters CRISPR related. Within minutes of the critical US decision on CRISPR last night Nature sought Cath’s opinion on the result.

February 2017

The US Patent and Trademark Office issues a verdict in legal tussle over rights to genome-editing technology.

The US Patent and Trademark Office (USPTO) has upheld a series of patents granted for CRISPR-Cas9 gene editing to the Broad Institute of MIT and Harvard.

The hotly anticipated decision could conclude a contentious battle between the Broad Institute in Cambridge, Massachusetts, and the University of California over intellectual property rights to the potentially lucrative technology. Although the Broad was awarded its patents first, the University of California was the first of the two to apply for a patent on the technology. The California contingent also argues that its team in Berkeley had invented the technique before investigators at the Broad.

Lawyers representing the University of California filed for an ‘interference’ proceeding, in an effort to have the Broad's patents thrown out. But on 15 February, patent judges determined that there was no interference, meaning that the Broad’s invention is distinct from that of the University of California's, and the Broad patents will stand. The University of California’s patent application will now be referred back to an examiner, but legal challenges could continue.

Outlook hazy

Throughout the interference proceeding, which began in January 2016, the Broad’s lawyers argued that the University of California’s patent application did not specify how CRISPR-Cas9 editing could be adapted for use in eukaryotic cells — such as those in mice or people. The Broad’s patents did make that distinction: as a result, the lawyers argued, the two patent families would not overlap. The strategy would give the Broad control of what are likely to be the most lucrative applications of CRISPR-Cas9 gene editing in plants, livestock and humans.

In the wake of the USPTO decision, however, officials at the University of California said that its patent would nevertheless cover the use of CRISPR-Cas9 in all cells: eukaryotic or otherwise. One of the inventors on that patent, molecular biologist Jennifer Doudna of the University of California in Berkeley, likened the situation to licensing permission to someone who wants to use green tennis balls. "They will have a patent on the green tennis balls," she said, referring to the Broad patents. "We will have a patent on all tennis balls."

Even so, stock in Editas Medicine — a Cambridge, Massachusetts biotechnology firm that has licensed the patents from the Broad Institute — surged shortly after the USPTO verdict was announced. “We are pleased with the USPTO’s decision,” said Editas president Katrine Bosley in a statement. “This important decision affirms the inventiveness of the Broad’s work.”

“I think this decision is fair,” says Catherine Coombes, a patent lawyer at HGF in York, UK. The University of California’s invention would cover the design of the RNA molecule that guides the key step in CRISPR-Cas9 gene editing, directing the Cas9 enzyme to a specific site in the genome. But getting that system to work in eukaryotes was an additional inventive step, Coombes says.

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