This article has been updated from a previous version to include a statement from ERS Genomics on the EPO's decision regarding the Broad Institute's European patents.
NEW YORK (GenomeWeb) – Rockefeller University and the Broad Institute said this week that they have settled a dispute over the inventorship and ownership of certain CRISPR-Cas9 intellectual property, leaving the specifics of the IP unchanged.
Separately today, the Broad announced that it has experienced a setback in proceedings over a CRISPR patent application filed in Europe, but said that the issue is not related to the application's scientific merits.
In the dispute between Rockefeller and the Broad, Rockefeller had argued that one of its faculty members — Luciano Marraffini, who co-authored a key paper on the genome-editing technology with Broad's Feng Zhang — should have been included on certain of the Broad's US and PCT patent filings covering the use of CRISPR in eukaryotic cells.
Broad disagreed and the matter was submitted to binding arbitration in which it was decided that the inventorship on the IP in question would remain unchanged. Other Broad IP related to CRISPR in prokaryotic cells includes Marraffini as an inventor and is jointly owned with Rockefeller.
Meanwhile in Europe, the Broad said that the European Patent Office has decided after an initial review to deny the institute's reliance on a US priority provisional application for a CRISPR-related patent in Europe based on a technicality.
According to the Broad, the issue relates to "the current interpretation of rules that dictate what happens when the names of inventors differ across international applications. This interpretation affects many other European patents that rely on US provisional patent applications, and is inconsistent with treaties designed to harmonize the international patent process, including that of the United States and Europe."
The Broad said that it intends to appeal the decision to the EPO Board of Appeal and that it is confident that the agency will "harmonize" its procedures to be consistent with international treaties.
However, ERS Genomics — which provides access to competing CRISPR/Cas9 intellectual property held by Emmanuelle Charpentier of the Max Planck Institute for Infection Biology in Berlin — responded to Broad's statement, noting that the EPO "rejected the Broad Institute's position that its patent was entitled to a priority date pre-dating the prior art," and that the EPO decided that "in originally obtaining the patent, the Broad Institute ... failed to follow rules and established caselaw for properly establishing an earlier priority date."
ERS further noted that Broad's expectation that the EPO will harmonize procedures to be consistent with international treaties "would require a change in the law itself."
"The vast majority of the Broad Institute's CRISPR patents in Europe are also affected by this same deficiency and we expect them to meet a similar fate," ERS CEO Eric Rhodes said in a statement.
Other legal battles over CRISPR IP remain ongoing for the Broad. In October, the Broad filed a brief in the United States Court of Appeals for the Federal Circuit in response to an earlier appeal filed by the University of California, Berkeley that aimed to continue their fight for rights to IP underpinning the most lucrative applications of genome editing.
Previously, the US Patent and Trademark Office declared an interference proceeding to settle certain claims related to the CRISPR patent battle between the Broad and UC Berkeley. However, a Patent Trial and Appeal Board panel later issued a judgement of no interference-in-fact, stopping UC Berkeley's bid for the IP and leaving the Broad to control the key IP estate for companies pursuing targeted genome editing applications in several areas. UC Berkeley then appealed the decision.
Meanwhile, several of Broad's European patents continue to be challenged by various third parties.