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CRISPR Cross-Licensing Deal Solidifies Challengers' Alliance in Patent Battle

NEW YORK (GenomeWeb) – The University of California, the University of Vienna, and researcher Emmanuelle Charpentier have announced a large cross-licensing agreement for intellectual property covering CRISPR/Cas9 genome editing technology and have teamed up to defend what they view as the foundational IP for CRISPR.

Under the terms of the agreement, the parties will commit to "maintain and coordinate the prosecution, defense, and enforcement of the CRISPR/Cas9 foundational patent portfolio worldwide," they said in a statement. Each party also grants cross-consents to all existing and future licenses and sublicenses based on the rights of another party. 

The three partners all trace their patent rights to early work on CRISPR/Cas9 done by Charpentier, now at Berlin's Max Planck Institute for Infection Biology, and UC-Berkeley Professor Jennifer Doudna. Their US patent application is currently at the center of an IP battle being adjudicated by the US Patent and Trademark Office Patent Trial and Appeal Board. UC is leading the patent interference proceedings, opposite parties led by the Broad Institute.

The agreement immediately impacts several key sublicensees: Caribou Biosciences, Intellia Therapeutics, CRISPR Therapeutics, and ERS Genomics. Berkeley, California-based Caribou is the exclusive licensee for UC's patent rights and a founding investor in the publicly-traded Intellia Therapeutics. ERS Genomics is a company set up to commercialize Charpentier's IP.

"Intellia, CRISPR Therapeutics, Caribou, and ERS view this agreement as enhancing the efforts to protect our shared intellectual property rights and support the ongoing development of our product candidates, as well as those of our corresponding partners and licensees," CRISPR Therapeutics CEO Rodger Novak said in a statement. Intellia CEO Nessan Bermingham added that the agreement "strengthens" his company's IP position.