BERKELEY, Calif., June 25, 2019 /PRNewswire/ -- The Patent Trial
and Appeal Board (PTAB) of the U.S. Patent and Trademark Office
(USPTO) has declared an interference between 10
University of California patent
applications and multiple previously issued Broad Institute
patents. This action jeopardizes 13 of the Broad's 15 CRISPR-Cas9
U.S. patents, and one patent application, and signals that the
USPTO will take up the issue of who first invented CRISPR-Cas9
genome editing in eukaryotic cells (e.g., plant and animal
cells).
The CRISPR-Cas9 DNA-targeting technology was invented by
Jennifer Doudna and Martin Jinek at
the University of California (UC),
Berkeley; Emmanuelle Charpentier (then of Umea University,
Sweden); and Krzystof Chylinski at the University of
Vienna.
"The initiation of this interference proceeding highlights that
previous decisions involving the Broad did not determine who was
the first to invent this technology, and it lays out a pathway for
resolving this important issue," said Eldora L. Ellison, Ph.D., lead patent strategist
on CRISPR matters for UC and a director at Sterne, Kessler,
Goldstein & Fox. "We are confident that the USPTO will
ultimately recognize that the Doudna and Charpentier team hold the
priority of invention specific to eukaryotic cells, as well as
other settings covered by previous patents."
In September 2018, the United States Court of Appeals issued a
ruling that upheld a Patent Trial and Appeal Board (PTAB) judgment
that had found no interference-in-fact between UC claims and
patents already issued to Broad, stating that the claims were not
directed to the same subject matter. That ruling made no specific
determination regarding priority of invention of genome editing
within eukaryotic cells. UC was subsequently issued six U.S.
patents for CRISPR technologies in other cellular or non-cellular
settings, with six additional applications set to issue in the
coming weeks and holds more than 50 CRISPR patents worldwide.
"The University of California and
other public universities are critical sources for innovation
across many industries," said Edward
Penhoet, special advisor to the UC Berkeley chancellor and
special assistant to the president of the University of California. "We are committed to
protecting the intellectual property of the groundbreaking
inventions of UC faculty, like the CRISPR-Cas9 breakthrough.
Today's declaration of interference reinforces the importance of
the university's role in protecting discoveries and their
pursuit."
This declaration of interference affects 13 of the 15 Broad U.S.
patents, as well as one application, essentially all of its CRISPR
patents involving eukaryotic cells. The six U.S. patents received
to date by UC are not included in this interference. Based on
current PTAB interference schedule, the interference is likely to
be completed within two years.
In addition to six U.S. patents, UC has received four patents
from the European Patent Office (representing more than 30
countries), as well as patents in the United Kingdom, China, Japan,
Australia, New Zealand, Mexico, and other countries.
The international scientific community has widely acknowledged
the pioneering invention by the Doudna-Charpentier team on
CRISPR-Cas9 genome editing through numerous awards, including the
Breakthrough Prize in Life Science, Japan Prize, Gruber Prize in
Genetics, BBVA Frontiers of Knowledge Award, and Kavli Prize in
Nanoscience.
University of California has a
long-standing commitment to develop and apply its patented
technologies, including CRISPR-Cas9 genome editing, for the
betterment of humankind. Consistent with its open-licensing
policies, UC allows nonprofit institutions, including academic
institutions, to use the technology for non-commercial educational
and research purposes.
UC encouraged widespread commercialization of the CRISPR-Cas9
technology through its exclusive license with Caribou Biosciences,
Inc. of Berkeley, California,
which has sublicensed the technology to many companies
internationally, including Intellia Therapeutics, Inc. for certain
human therapeutic applications. Additionally, Dr. Charpentier has
licensed the technology to CRISPR Therapeutics AG and ERS Genomics
Limited.
The ten UC patent applications in the proceeding are: US
15/947,680; US 15/947,700; US 15/947,718; US 15/981,807; US
15/981,808; US 15/981,809; US 16/136,159; US 16/136,165; US
16/136,168; and US 16/136,175.
The Broad patents affected include patents 8,697,359; 8,771,945;
8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616;
8,932,814; 8,945,839; 8,993,233; 8,999,641; 9,840,713; and
application 14/704,551.
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SOURCE University of California
Office of the President