Broad Institute takes a hit in European CRISPR patent struggle
|sciencemag.org 18 Jan 2018 at 12:33|
A decision from the European Patent Office (EPO)has put the Broad Institute in Cambridge, Massachusetts, on shaky ground with its intellectual property claims to the gene-editing tool CRISPR. EPO yesterday revoked a patent granted to the Broad for fundamental aspects of the technology, one of several of its patents facing opposition in Europe.
In the United States, the Broad has had better fortune. It has so far prevailed in a high-profile patent dispute with the University of California (UC), Berkeley. Last February, the U.S. Patent Trial and Appeal Board ruled that although a team led by UC Berkeley structural biologist Jennifer Doudna had first laid claim to the use of CRIPSR to cut DNA in a test tube, the use of the method on human cells by molecular biologist Feng Zhangs team at the Broad was still an advance .
But in Europe, a dispute that has gotten much less attention could derail several key Broad patents. The patent just revoked was filed in December 2013, but to show that its claims predate competing publications and patent filings from UC and other groups, the Broad cites U.S. patent applications dating back to December 2012.
Unfortunately, those earliest U.S. filings include an inventor, microbiologist Luciano Marraffini of The Rockefeller University in New York City, who was not listed on the European filing. Disagreement between Rockefeller and the Broad over Marraffinis role in key CRISPR inventions led to a bizarre dispute, creating conflicting, identical patents with different authors,
reported in 2016.
The two institutions. But because of strict rules in Europe about the listing of inventors on patents, Marraffinis exclusion from the European filing meant the Broad couldnt claim the priority date of the earliest U.S. patents, and therefore couldnt lay first claim in Europe to the technologies described.
The invalidated patent is one of several facing formal oppositions filed with EPO. One opponent of the now-revoked patent was CRISPR Therapeutics, co-founded by microbiologist Emmanuelle Charpentier, now at the Max Planck Institute for Infection Biology in Berlin, who collaborated with Doudna on early CRISPR technology and is listed on key patents. And the same issue could threaten more of the Broads intellectual property in Europe, says Jacob Sherkow, a patent specialist at New York Law School in New York City. If the Broad cant get the priority date that they want in their patents, things are just going to be really bad for them, he says. It looks like UC Berkeley and Emmanuelle Charpentier are going to have the dominant patent position in Europe going forward.
She notes that the decision doesnt threaten the many follow-on patents the Broad has filed for gene-editing technologies, including alternatives to the Cas9 enzyme used in the early CRISPR work. And the new blow to the Broad doesnt change the fact that companies commercializing CRISPR-based products will likely have to license technology from multiple patent holders. The CRISPR landscape is a lot murkier in Europe because its perfectly feasible to have lots of overlapping rights, she says. I cant say that its suddenly a winner-takes-all scenario.