Update On CRISPR Patent Battle

Discovery of the revolutionary gene editing technology called CRISPR touched off a battle between the University of California (UC) and the Broad Institute (Broad) over control of the associated patent rights. The technology evolved out of research findings that the CRISPR-Cas 9 immune system of prokaryotes (e.g., bacteria) could be harnessed as a gene editing tool with widespread potential commercial applications in the fields of medicine and agriculture.

UC and Broad both filed initial patent applications prior to the effective date of the prior art provisions of the AIA, making their applications subject to pre-AIA law regarding priority of invention. One year ago, on January 11, and at the suggestion of UC, the PTAB declared an interference between UC's pending patent application and a series of patents issued to Broad covering CRISPR technology (interference no. 106,048). UC filed its initial patent application first and also published a preliminary report several months prior to Broad's earliest filing date. However, Broad used the priority examination option at the USPTO to move its applications more quickly to grant.

The claims of the Broad patents relate to use of CRISPR in eukaryotic cells, i.e., cells having a nucleus such as plant or animal cells. UC's pending claims do not recite a specific cell environment, and thus cover the use of CRISPR in either eukaryotic or prokaryotic cells. The PTAB's declaration of interference identified the interfering subject matter (i.e., the count) as the use of CRISPR in eukaryotic cells.

Over the past year, the parties proposed motions in the PTAB on various matters related to the priority contest, as well as the patentability or enforceability of the opposing party's claims. During the initial stage of the contest, however, the PTAB has confined the proceedings to the parties' positions on issues that impact the priority contest, such as whether an interference-in-fact existed, the benefit of priority claims, and the definition of the count. On December 6, 2016, the PTAB heard oral arguments on these issues.

A central issue in the interference concerns whether Broad's claims to CRISPR in eukaryotic cells cover a separate invention from UC's claims that do not specify a particular cell environment. If so, then no interference-in-fact would exist and the PTAB would be expected to dissolve the interference.

Broad argues that the conditions for an interference-in-fact under the two-way test of...