The Broad Institute, Cambridge, Massachusetts, has been awarded the US intellectual property rights for the use of CRISPR/Cas9 by a Patent and Trial Appeal Board (PTAB).
The Broad Institute and the University of California (UC), Berkeley have been involved in a ten-year legal fight for the rights to the genome editing approach in eukaryotic (plant and animal) cells, which are expected to become extremely valuable (see BioNews 967 and 1004). Both sides were involved in an 'interference' – a legal process for patent disputes over the same invention – which has now ended in the Broad Institute's claim being upheld.
Catherine Coombes, a patent attorney uninvolved in the case, told the Scientist that the ruling means 'Broad is the only inventor [of CRISPSR/Cas9] and UC Berkeley's claims [involving the eukaryotic environment] – they now get struck out... So what you have is a situation in the US whereby the UC Berkeley still have some broad subject matter claims, but Broad alone has claimed CRIPSR/Cas9 in the eukaryotic environment for the time being.'
CRISPR was first discovered as a genome editing method by Professor Jennifer Doudna, of UC Berkely and Professor Emmanuel Charpentier, of the Max Planck Institute, Berlin, Germany, who showed that the approach worked on DNA in a test tube. They were awarded the Nobel prize for chemistry in 2022 for their work (see BioNews 1067) and filed the first patent application for CRISPR with UC Berkeley in 2012.
Shortly after their work was published, a group of researchers lead by Professor Feng Zhang of the Broad Institute, demonstrated that the CRISPR approach worked in eukaryotic cells. The group, working alongside scientists at the University of Harvard, Cambridge, Massachusetts and the Massachusetts Institute of Technology, Cambridge, filed a fast-track patent application specifically for the use of CRISPR in eukaryotic cells that was approved first, triggering the legal fight.
Robert Sanders, a media representative for UC Berkeley said 'The University of California is disappointed by the PTAB's decision and believes the PTAB made a number of errors.' He added that UC Berkeley was 'considering various options to challenge the decision.'
Although the appeal can still be challenged by UC Berkeley, due to the nature of the ruling Dr Robert Cook-Deegan, Arizona State University science policy expert, said 'I don't think UC can be too optimistic about re-securing it's claims on eukaryotic CRISPR/Cas9'.
While the decision awards the US patent for eukaryotic CRISPR applications to the Broad Institute for now, it is being disputed in separate interference claims by biotechnology companies ToolGen and Sigma. The situation is also different in Europe, where the Broad Institute and UC Berkeley both hold multiple patents with overlapping rights and are involved in separate legal cases (see BioNews 1031).
Sources and References
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CRISPR's Nobel prize winners defeated in key patent claim for genome editor
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CRISPR patent ruling favours Broad Institute
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Breakthrough genome-editing technology belongs to Harvard, MIT - US tribunal
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CRISPR patent ruling picks winners in dispute over genome-editing technology
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Complex CRISPR patent decision benefits Broad Institute
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US patent appeal board rules against UC in CRISPR interference
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Editas shares boosted as patent office rules in favor of Broad's CRISPR patents, but the fight will continue
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