US starts formal investigation into CRISPR patents

The CRISPR 'patent wars' have now officially kicked off in the USA, with formal proceedings to determine who controls key patents over the revolutionary genome-editing technology.

The US Patent and Trademark Office (USPTO) declared an 'interference procedure' on 11 January, under which it will collect evidence to determine who was the 'first to invent' CRISPR/Cas9.

Patents over CRISPR/Cas9 are currently the subject of a dispute between scientists at the University of California, Berkeley and the Broad Institute of MIT and Harvard, Massachusetts, both of whom are claiming rights over the technology (see BioNews 802 and 829).

The first set of patent rights was awarded to Professor Feng Zhang at the Broad Institute in April 2014 under a special accelerated review programme, even though a team at UC Berkeley led by Professors Jennifer Doudna and Emmanuelle Charpentier had submitted a patent application first, several months prior to those filed by the Broad Institute.

UC Berkeley asked the USPTO to investigate in April last year, with a patent judge declaring last week that a conflict did arise between patent applications over the technology, signalling the start of the interference procedure.  

GenomeWeb explains that the patents were filed when the USA operated a 'first to invent' system, only later moving to a 'first to file' system. It goes on to say that the USPTO has named UC Berkeley as the senior party in the proceedings, meaning that the Broad Institute will need to establish that it invented the technology first. It also means that UC Berkeley is responsible for starting discussions on attempts to settle the dispute.  

'This is such an important technology for the industry I just almost think that for the sake of the industry, settlement between the parties would make sense,' Dr Lisa Haile of law firm DLA Piper told Genetic Engineering & Biotechnology News. She added that it might be a couple of years before the USPTO makes a decision.  

Adam Mossoff, patent specialist at George Mason University School of Law, said these actions usually arise over very valuable patents. 'This patent, in particular, is ... a significantly huge advance in gene-editing technology, and this type of technology is the core of what has made the biotech revolution,' he said.

Jacob Sherkow of New York Law School said: 'This is an absolutely humungous biotech patent dispute.'

A case conference is scheduled for March, and the proceedings will be conducted by Judge Deborah Katz.