The Scientist – The European Patent Office (EPO) yesterday (March 23) announced its intention to award a broad-strokes patent for CRISPR gene-editing technology to the University of California, Berkeley, the University of Vienna, and the Helmholtz Centre for Infection Research. The claims include the use of CRISPR across prokaryotic and eukaryotic cells and organisms, hitting upon the point of contention in a recent patent interference decision in the United States. In that case, the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) denied UC Berkeley the rights over the use of the technology in eukaryotes—the money-making application for CRISPR—leaving that intellectual property with the Broad Institute of MIT and Harvard.
According to EPO procedures, the international team’s patent is all but granted (a few logistical details, such as finalizing the text and paying fees, remain to be settled). “Substantively, the decision is made,”said Catherine Coombes, a senior patent attorney with HGF Limited in the U.K. who last year wrote an opinion for The Scientist on the CRISPR patent situation in Europe. “The EPO, by granting this [patent], is not being swayed by the PTAB decision in the U.S. . . . The claims are very broad.”
The Broad Institute will now have nine months to file its opposition to the EPO patent’s claims. Coombes said she expects that will happen. “We can, of course, expect multiple oppositions upon grant,” Coombes said. “No doubt, these will concentrate heavily on why UC Berkeley shouldn’t be entitled to their earliest [filing] date” for all the claims listed.
Unlike the parallel process in the U.S., the UC Berkeley–Vienna–Helmholtz Centre team will have multiple opportunities to amend its claims, noted Kevin Noonan, a biotech expert and partner at the Chicago-based IP law firm McDonnell Boehnen Hulbert & Berghoff. The team “could ultimately get more narrow claims,” he said. If that’s the case, he added, the situation in Europe could end up the way the US IP landscape is expected to play out, with UC Berkeley owning rights to CRISPR’s use in prokaryotes, and the Broad Institute owning CRISPR rights in eukaryotes. Otherwise, the UC Berkeley team could end up with intellectual property rights over CRISPR technology in both prokaryotic and eukaryotic cells.
The EPO’s decisions should not have any impact on future proceedings at the USPTO, said Noonan. “The US courts and patents laws don’t care what the Europeans do,” he said.
The Broad Institute—which in February announced that the EPO intended to grant its first patent for CRISPR-Cpf1, an alternative to the CRISPR-Cas approach at the heart of the Berkeley-Broad patent fight—declined to comment at this time. Representatives for UC Berkeley, the University of Vienna, and the Helmholtz Centre have not yet provided comment.