In a press release on 10 July 2017, the Broad Institute announced that is has, with joint patent owners Harvard University, the Massachusetts Institute of Technology and the Rockefeller University, entered discussions about a potential CRISPR patent pool. The institutions collectively submitted 22 patents (from 10 patent families) for consideration to be included in a CRISPR-Cas9 joint patent pool. The proposed patent pool is being coordinated by MPEG LA, an organisation that coordinates various other patent pools in a variety of different fields, predominantly in the video technology space. The Broad Institute’s letter submitting these patents for eligibility evaluation can be accessed here.

Discussion eligibility requirements

Earlier this year, MPEG LA issued an invitation to CRISPR-Cas9 patent holders to participate in a global CRISPR-Cas9 Joint Licensing Platform to create “a single nonexclusive, cost-effective, transparent license” which would “allow the market to focus on the creation of new products and therapies that accelerate and expand CRISPR’s deployment”. MPEG LA has the following eligibility requirements to qualify to participate in discussions regarding the creation of a CRISPR-Cas9 Joint Licensing Platform:

eligible patent assets will consist of issued patents or published patent applications having one or more claims directed to: – the CRISPR-Cas9 System or any of its elements (as described in MPEG LA’s CRISPR-Cas9 Reference Model); – a composition of matter containing the CRISPR-Cas9 System or any of its elements; – a composition of matter derived from use of the CRISPR-Cas9 system or any of its elements; or – a method of use, or a method of manufacture, pertaining to any of the foregoing.

Only one patent need be submitted and considered eligible according to the above requirements to qualify the patent holder(s) to participate in patent pool discussions. Submitting a patent and qualifying to participate in the discussions does not oblige the patent holder to participate in the CRISPR-Cas9 Joint Licensing Platform – this only occurs when a patent holder executes agreements governing the terms and conditions under which the patent(s) will be included in the patent pool. Any discussions that take place after the eligibility criteria have been satisfied are entirely confidential and there is no obligation on a patent holder to disclose the fact that they have submitted any patent(s) to be considered against the eligibility requirements nor that they are participating in pooling discussions.

What can be made of the Broad’s participation?

The Broad Institute has said that “ patent pool would create a one-stop shop for commercial users to license CRISPR patents without needing to navigate a complex patent and licensing landscape”. MPEG LA has described a CRISPR patent pool as “a voluntary market-based business solution to the patent access problem tailored to balance, incentivize and resolve competing market and public interests”.

The Broad Institute’s and its joint patent owners’ decision to participate in discussions concerning a CRISPR patent pool and to disclose this fact is perhaps both surprising and unsurprising. The institutions already make CRISPR tools freely available to academic and non-profit communities and issue non-exclusive licences for most types of commercial research, except human therapeutics (for further information on the CRISPR licensing landscape, visit our microsite here and for our licensing landscape diagram, click here). In relation to human therapeutics, the Broad Institute puts limits on exclusivity through its ‘Inclusive Innovation’ model. This model allows one licensee exclusive use of the technology for a defined period of time (two years), this is then followed by an open-call for applications by other groups. In the case of CRISPR-Cas9, the two year exclusivity period has ended and the Broad Institute are inviting other groups to apply for use of the technology through their website.

As far as we are aware, the Broad Institute and their joint patent owners are the only key players as of yet to enter into discussions relating to a CRISPR patent pool. However, as mentioned above, there is no obligation on those entering into confidential discussions with MPEG LA to disclose the fact that they are doing so.

The fact that the Broad Institute decided to make its participation in CRISPR patent pool discussions public and its submission of 22 patents for eligibility consideration (when only one is necessary to enter into discussions) sends a strong message to the marketplace and other CRISPR patent holders. It could be seen as a strategic move to corral other patent holders to move towards patent pooling to ensure more open access to CRISPR tools. Despite these key players’ participation in patent pooling discussions seeming to move towards more openness in relation to CRISPR technology, the patent pool could be beset with many issues and may never actually come to fruition.

For further discussion of the issues any potential patent pool will have to overcome before launch and for thoughts on what lies ahead, see our full length post on our CRISPR microsite here.