Broad CRISPR/cas9 patent revoked in Europe

January 2018

The Opposition Division of the European Patent Office has issued its Decision on the key issue of priority for Broad’s CRISPR/cas9 patent EP 2 771 468. This Decision will also affect Broad’s other CRISPR/cas9 patents in Europe where Rockefeller University was not named as an applicant at the filing date.

Broad issued a press release overnight stating that the outcome of Rockefeller’s and Broad’s ownership dispute, in binding arbitration, was that no change of in ownership of the patents was required. However, priority and ownership are separate issues under European patent law and the arbitration outcome is not enough to provide a valid claim to priority under European patent law.  Whilst the EPO cannot determine ownership (a matter for national courts) it has the power to determine the right of priority. The Opposition Division has announced that the Broad Institute is not entitled to their earliest filing dates of 12 December 2012 and 2 January 2013.

The result is that highly relevant publications (such as Cong 2013, Mali 2013 and Jinek 2013) are citeable against these patents.

In Europe, a patent applicant or its successor can enjoy a right of priority to an earlier application, with the later application being able to claim the earlier date. However, Broad is not considered a successor under European patent law because neither the joint applicant (Luciano Marraffini) nor his institution (Rockefeller University) of the earlier patent application were named as a joint applicant on the later filed patent application.

Established case law in Europe makes it clear that where there are multiple applicants in the earlier patent application, they together constitute a legal unity unless one of them decides to transfer his right to the other applicant, who then becomes his successor in title and this is before the filing date of the application. As no assignment of the priority right from Marraffini to the Broad Institute was made before the filing date of the later application, the successor in title requirement was not fulfilled.

In EP 2 771 468, the outcome is complete revocation of the patent. For their other patents in Europe having this issue, it may be the same or at least a very severe restriction of the claim scope. After the Oral Proceedings, the Opposition DIvision will issue a reasoned Decision in writing which will set a two month window for the Broad Institute to appeal to the Boards of Appeal of the EPO. Broad have already confirmed in a press release that they will appeal and so the Decision today will have suspensive effect.

For their other patents in Europe under opposition, where the outcome of priority is of critical importance, the EPO has given Broad exceptional extensions to the timeframe to respond to the oppositions. This has occurred for procedural economy so that the decision on priority on EP 2 771 468 could be taken into account in the other opposition proceedings. Oppositions on these patents will now continue and we are likely to see these patents also revoked or severely restricted in opposition before any appeal decision is made on EP 2 771 468.

The Decision today follows established case law on priority in Europe and ensures legal certainty for third parties who are able to verify whether priority is validly claimed based on objective criteria. The Decision may also aid applicants where there has been a change in applicant on certain third party patent documents cited for novelty against their patent. If the document is only prior art if entitled to priority, then unless succession in title is established, are such documents prior art? 

This update was prepared by HGF Patent Director Cath Coombes.  If you would like further advice on this or any other matter, please contact Cath Coombes. Alternatively, you can contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.