After the US patent office ruled against the University of California in its battle for key patents on the CRISPR-Cas9 genome editing technology last week, UC put on a brave face. It might appeal the decision, it told reporters. It might settle for the patent it originally filed for, in 2012, and live with the fact that the Broad Institute, which prevailed at the patent office, gets to keep crucial patents that UC challenged. Unfortunately for UC, a public institution that could really use royalty and licensing revenues from CRISPR patents, experts in intellectual property suspect that even its fallback positions are no more solid than shaving cream.
UC’s first hurdle involves any appeal. Under the America Invents Act, a law that came into effect in 2013 and was intended to promote innovation, patent office decisions can be appealed only to the Court of Appeals for the Federal Circuit.
Before 2013, a losing side “could submit additional evidence to a district court, take new depositions, and say that although the Patent Trial and Appeal Board [which heard the UC-Broad case] came to this conclusion it didn’t have this evidence,” said Brian Nolan, a partner and intellectual property litigator at global law firm Mayer Brown. But now it can’t. The Circuit court “looks at the [same] record”—exhibits, motions, depositions—that PTAB considered, he said, even if UC uncovered some powerful new evidence. “The Circuit court will look at the facts in its own way,” but since those facts did not persuade PTAB, UC faces an uphill climb.