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Patent Board Rules Broad Institute First With Functioning CRISPR System in Eukaryotic Cells

This story has been updated from a previous version to include a statement from a University of California spokesperson.

NEW YORK – In the fight between the Broad Institute and the University of California, Berkeley for the bulk of the intellectual property rights to CRISPR-Cas9 technology, the United States Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) issued a new ruling this week that may have given the Broad the definitive upper hand.

The PTAB is presiding over a second interference proceeding initiated by the USPTO in June 2019 that involves one patent application filed by, and 13 patents issued to the Broad in 2014, 2015, and 2017, as well as 10 patent applications filed by UC Berkeley in 2018, all on the use of CRISPR-Cas9 to edit eukaryotic genomes. The USPTO said it would collect, consider, and compare historical documentary evidence to establish invention dates. Because the applications were filed before the US moved to a "first to file" patent system in 2013, the patent rights would be granted under the old "first to invent" system.

The first interference proceeding ultimately ended in 2018 in a victory for the Broad after several appeals.

In its latest decision in the second interference this week, the PTAB moved the proceedings into a priority phase in order to consider the actual laboratory records from each party, so that it can firmly establish the dates of invention.

Importantly, the PTAB also ruled on priority dates, which are the dates it said each party demonstrated through its patent applications that it could indeed lay claim to invention of the technology.  

The PTAB accepted the Broad's request for a priority date of Dec. 12, 2012, and rejected Berkeley's request for a priority date of May 25, 2012, writing "the inventors' comments tend to indicate that they did not have possession of a functional CRISPR-Cas9 system in eukaryotic cells" at that time. Instead, the PTAB has accepted Jan. 28, 2013 as Berkeley's priority date.

Further, the PTAB has confirmed the Broad as the senior party for the next phase of the proceedings, and Berkeley as the junior party. The Broad was first designated as the senior party when the second interference was initiated in June 2019, a designation that the institute said at the time carried with it the presumption that the Broad was also the first to invent, and that it was the junior party that carried the burden of proof.

"Although we are prepared to engage in the process before the PTAB and are confident these patents have been properly issued to Broad, we continue to believe it is time for all institutions to move beyond litigation and instead work together to ensure wide, open access to this transformative technology," the Broad said in a statement on the latest ruling. "The best thing, for the entire field, is for the parties to reach a resolution and for the field to focus on using CRISPR technology to solve today's real-world problems."

In an emailed statement, a University of California spokesperson noted that UC is "pleased that the [PTAB] has ruled in our favor in most instances" and said that the it will continue with the interference proceeding to determine which party was the first to invent CRISPR in eukaryotes.

"The PTAB denied many of the Broad's motions, including a motion that sought to prevent us from participating in the current interference, a motion to change the count of the interference, and a motion to remove Broad Institute claims from the proceeding," the spokesperson said. "While we disagree with the PTAB's determination not to recognize UC and its co-owners as the senior party in this proceeding, we remain confident that the PTAB will ultimately recognize that the [UC Berkeley researcher Jennifer] Doudna and [Max Planck Institute for Infection Biology researcher Emmanuelle] Charpentier team was first to invent the CRISPR-Cas9 technology in eukaryotic cells."