Recently, the U.S. Patent Trial and Appeal Board issued an important decision in a case relating CRISPR-Cas9, the use of which is a considered a groundbreaking technique in the field of genome engineering. CRISPR-Cas9 has attracted immense attention from the scientific community and is believed to be of great commercial value.

In the present case, a patent application directed to CRISP-Cas9 was filed in May 2012 by scientists at the University of California, Berkeley. Shortly after the filing, they published a paper demonstrating their findings in respect of CRISPR-Cas9. Another patent application also directed to CRISP-Cas9 was filed in December 2012 by a team of scientists at the Broad Institute of MIT and Harvard.

Upon filing their patent application, the Broad Institute scientists requested expedited processing at the USPTO and obtained a granted patent in 2014. The application of the Berkeley scientists was then still pending. Following this, the Berkeley scientists instigated a so-called interference procedure at the USPTO requesting a decision on which applicant was entitled to the CRISPR-Cas9 invention. At this time, the United States had not yet implemented a first-to file system and instead applied a first-to-invent system according to which a party being able to show that they were first to invent was entitled to the invention.

However, in their ruling, the U.S. Patent Trial and Appeal Board stated that the applications are not directed to the same invention. While the invention of the Board Institute scientists was directed to CRISPR-Cas9 for genome editing in eukaryotic cells, the Berkeley scientists claimed their invention in more general terms and had only showed that it worked in test tubes. Moreover, the U.S. Patent Trial and Appeal Board did not agree with the Berkeley scientists that their previous disclosure of CRISPR-Cas9 rendered the invention of the Board Institute scientists obvious.

It remains to be seen if the Berkeley scientists will appeal the USPTO´s ruling.

Further, if the patent application of the Berkeley scientists results in the grant of a patent, it may have a claim scope encompassing that of the Broad Institute patent thereby potentially preventing the Board Institute scientists from exploiting their invention unless they are granted a license from the Berkeley scientists.

It also remains to be seen what the outcome will be for the corresponding applications in Europe. At this point in time, it can be noted that while an Office Action from the European Patent office indicated allowability for the patent application filed by the Berkeley scientists, this was followed by submissions of third party observations stating that the claims on file do not comply with the requirements of the European Patent Convention.