CRISPR patent battle begins, setting 'first to file' against 'first to invent'
- Scientists at the University of California (UC) are claiming patent rights to the much-heralded CRISPR gene-editing technology, although the Broad Institute (BI) in Cambridge, MA currently owns most of the CRISPR patents. The high-stakes legal battle got started Wednesday with the US Patent Office initiating "interference proceedings."
- Most of the IP around the CRISPR DNA-slicing mechanism was awarded to the molecular biologist Feng Zhang for work conducted at BI, even though UC technically filed first.
- When BI filed the patent, the team requested an expedited review dating when it actually invented the technology to before the filing date, reports Science. Possible because of a change in patent law, BI was granted the expedited review and subsequently received the patents to CRISPR ahead of UC.
- Much of the CRISPR research at UC was undertaken by the molecular biologist Jennifer Doudna and Emmanuelle Charpentier.
CRISPR is slowly revolutionizing biotech R&D because of its potential power to exert therapeutic influence at the level of DNA. As much as CRISPR is a breakthrough technology, numerous researchers have been involved in developing it—and they are at odds over who should reap the financial rewards.
In the interference proceedings, UC has filed a motion which could overturn BI patents based on a technicality, according to Science. The 2011 Leahy-Smith America Invents Act (AIA) changed the US patent system, putting into place a 'first to file' framework rather than the 'first to invent' system. for awarding patents. However, even though the law went into effect on March 16, 2013, patent applicants could still file under "first to invent" by claiming their invention dated back to before the law changed.
BI did this in its application, leading to its award. But they may have failed to appropriately designate all of its supposed inventions as happening before March 16th. UC's motion attempts to claim this invalidates their claim, and UC should be awarded the patents as it filed first.
Further complicating matters, there are a number of patents at stake in the case for various aspects of the CRISPR technology. A conference call this week with the Patent Office judges with kick the proceedings off, but the legal battle is likely to drag on for some time.