June 25, 2021
The European Patent Office (EPO) has revoked another CRISPR patent, co-owned by the University of California Berkeley (“Berkeley”), due to an invalid priority claim.
The CRISPR patents relate to a gene-editing technique, which led to Berkeley professors Emmanuelle Charpentier and Jennifer Doudna becoming the first women to win the 2020 Nobel Prize in Chemistry without a male contributor.
As reported by the National Law Review, the patent EP3241902 (“the 902 patent”) was revoked following oral proceedings in April 2021 that were deferred due to the COVID-19 pandemic. The written decision had not yet been published at the time of writing this article, but the EPO had released a non-binding opinion in advance of oral proceedings.
In the opinion, the EPO gave weight to arguments for revocation on the grounds that the invention in the 902 patent was not plausible based on the content of the May 2012 patent application and suggested that a June 2012 journal article by Berkeley researchers (including Doudna and Charpentier) may be relevant prior art. The June 2012 article described the mechanism known as CRISPR-Cas9 as “molecular scissors” for its ability to cut through DNA to modify existing genes. If the June 2012 article is considered prior art, the patent would be revoked due to its lack of inventive step.
In February 2020, the EPO had found that Berkeley was entitled to the May 2012 priority date and did not consider the June 2012 article to be prior art. The EPO has since taken a different view.
This is the latest decision in a long line of legal battles over the rights to the CRISPR-Cas9 technology but it will not be the last. Berkeley has already filed a notice of appeal.
Author: Meghan King