he University of California has filed an appeal to overturn a February decision by a US patent tribunal that dealt UC a setback in its efforts to win foundational patents on the revolutionary genome-editing technology CRISPR-Cas9.
In that decision, the US Patent Trial and Appeal Board ruled that CRISPR patents issued to the Broad Institute of MIT and Harvard in 2014 did not cover the same inventions for which UC had sought patents. The PTAB decision found that the claims can be patented separately. That left UC free to pursue its original patent applications, but was deemed a setback because the Broad was left with what many experts considered the more valuable intellectual property.
The appeal seeks to have PTAB reverse its decision, and conclude that the Broad’s patents on the use of CRISPR-Cas9 in eukaryotic cells — those of advanced organisms, including all plants and animals — are so similar to UC’s patent application on the use of CRISPR in more primitive cells, like bacteria, that they should not have been granted.
UC was joined in its appeal, filed on Wednesday in the federal Court of Appeals in Washington, D.C., by its partners in its CRISPR patent efforts, the University of Vienna and biologist Emmanuelle Charpentier, who collaborated with UC biochemist Jennifer Doudna on the pioneering CRISPR research.
“Ultimately, we expect to establish definitively that the team led by Jennifer Doudna and Emmanuelle Charpentier was the first to engineer CRISPR-Cas9 for use in all types of environments, including in non-cellular settings and within plant, animal, and even human cells,” said Edward Penhoet, a special adviser on CRISPR to the UC president and UC Berkeley chancellor. Penhoet is also the associate dean of biology at UC Berkeley and a professor emeritus of molecular and cell biology.
UC also intends to continue its efforts to obtain patents elsewhere in the world on the CRISPR-Cas9 technology “in non-cellular and cellular settings, including eukaryotic cells,” the university said in a statement. Last month, UC was told by the European Patent Office that it would be awarded a patent on the basic CRISPR-Cas9 technology on May 10.
In a statement, the Broad said that “given that the facts have not changed, we expect the outcome will once again be the same. We are confident the Federal Circuit will affirm the PTAB decision and recognize the contribution of the Broad, MIT, and Harvard in developing this transformative technology.”
In a federal circuit case, the judges do not reexamine the facts determined by PTAB. Instead, UC will have to argue that the three PTAB judges committed an error of law, such as improperly barring evidence or ruling incorrectly on a motion. That, said Broad spokesman Lee McGuire, “seems unlikely.”
“They’re appealing the kitchen sink,” said patent expert Jacob Sherkow of New York Law School. “They don’t want to waive anything that could help them.”