CRISPR Cas9 priority rejected by Technical Board of Appeal

In a much discussed case, the Technical Board of Appeal (TBA) of the EPO rejected an appeal against revoking a CRISPR Cas9 patent, EP2771468. The patent was originally revoked by the Opposition Division (OD) on the basis that its priority right was not valid and so the claimed subject matter lacked novelty over key CRISPR papers published between the priority date and the PCT filing date.

The facts were that the claimed priority date was to provisional US applications made by Broad Institute, MIT and others. Under the US system, the applicants for those provisional applications were the inventors of the claimed subject matter.

However, the PCT application from which the CRISPR patent at issue derived did not name all the inventor-applicants of those provisional applications. This was because the missing inventor-applicants had not assigned their priority rights to the named PCT applicants.

The TBA was asked to reconsider the existing approach to priority, in which assignment of priority rights from all applicants for the priority application to the subsequent application is necessary. Can the priority claim valid even without this?

The TBA has answered this question "no", maintaining the existing approach.

Patent #: EP2771468

Forum: Technical Board of Appeal

Date: 16 January 2020

A rare and successful application of the Crown use defence

IPCom GmbH & Co KG v Vodafone Group Plc [2020] EWHC 132 (Pat) is a telecoms case, but it deals with wide principles that from time to time arise in the life sciences context.

It concerns a dispute between IPcom and Vodafone concerning the essentiality, infringement and validity of IPcom's EP(UK) 2,579,666, titled Allocation of access rights for a telecommunications channel to subscriber stations of the telecommunications network.

The patent is directed to engineers concerned with developing mobile phones for use in the UMTS mobile telecommunications standard, and in particular, in developing systems for control of access to the random access channel between the mobile and the base station.

Certain conditional and unconditional amended claims were held standard essential and infringed. As part of its defence, Vodafone relied on two particular defences.

Crown use defence

Very unusually, Vodafone relied on the Crown use defence in section 55 et seq of the Patents Act 1977 in respect of all acts done in relation to the Mobile Telecommunications Privileged Access Scheme (MTPAS) (a scheme to provide the emergency services with priority access to the mobile phone network in an emergency situation).

While the MTPAS scheme did not grant express permission to infringe IPcom's patent or any patent, what mattered is the written authorisation to do the relevant act (in this case requests from a Police Gold Commander who is acting pursuant to Cabinet Office authority), rather than for Vodafone also to show that it was necessary for them to infringe the patent. Furthermore, if Vodafone were to be able to respond to a genuine request when received, it was held the defence must also apply to allow it to test its own ability to do so.

De minimis defence

The English courts were once sceptical about such a defence although it has become more established recently (see Napp v Dr Reddy's Laboratories [2016] EWHC 1517). Unlike earlier cases, the infringement here did not involve the production of a small amount of infringing by-product during a process which, as a whole, does not infringe.

Rather, it concerns a process which is only performed in rare situations in the first place – Vodafone has to be ready to implement access control on its network in any part of the country as soon as it is necessary to do so, even if in practice this is not very often:

  • MTPAS testing (every few weeks for a few minutes on a few base stations; and, three times a year on a larger scale, for up to a few hours, on tens of base stations)
  • acts set out in Annex E of the product and process description (PPD) in the case, taking place on less than 10 base stations, and
  • PPD Annex F acts taking place over a five month period on 10 base stations.

The volume of the above acts was very small, because they were only generally necessary during normal operation in extreme circumstances.

But the judge did not accept that they are such that Vodafone must be allowed to use somebody else’s invention with impunity (which is what he thought the argument amounted to). The defence was not therefore successful.

Case: IPCom GmbH & Co KG v Vodafone Group Plc [2020] EWHC 132 (Pat)

Forum: English Patents Court

Date: 28 January 2020