May 18, 2021
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The invention of CRISPR in the past decade has given researchers the ability to manipulate genetic information, with potentially revolutionary implications for agricultural and medicinal sectors – but it has also led to lengthy litigation.
CRISPR was originally reported by Jennifer Doudna and Emmanuelle Charpentier in 2012, as an outgrowth of their work on bacterial immunity at the University of California at Berkeley and the University of Vienna (collectively, “CVC”). However, their publication did not explicitly show that CRISPR could edit genes in eukaryotic cells (almost every type and species of cell except bacteria), and there was some evidence that their earliest attempts to achieve eukaryotic CRISPR were unsuccessful.
The first scientific publication demonstrating successful eukaryotic CRISPR was by Feng Zhang and colleagues at The Broad Institute, MIT and Harvard University (collectively, “Broad”).
Both teams filed patent applications, understanding that the key to bringing this technology to market lied in their ability to be patent-protected. The Patent Trial and Appeal Board (“PTAB”) instituted an interference proceeding to determine who invented eukaryotic CRISPR first. Two years ago, PTAB came to the conclusion that Broad had the rights to eukaryotic CRISPR applications and that rights to CRISPR more generally were owned by CVC.
In June 2019, however, the PTAB announced another interference proceeding between the same parties, again involving the rights to eukaryotic applications of CRISPR. After having failed to secure eukaryotic CRISPR, the CVC team filed a more narrow application, which reopened the investigation. To date, PTAB has completed the preliminary phase of the interference and has not substantively changed its position. As PTAB enters the priority phase, it will be interesting to see whose claim prevails.
These circumstances leave the ownership status of eukaryotic CRISPR in the balance for the foreseeable future. As investments are made in CRISPR-based technologies, the licensing and commercialization of these patents may play a pivotal role in its practical applications.
Authors: Shadi Varkiani and Scott Kerr