The Broad Institute, Harvard University and Massachusetts Institute of Technology won the first battle on CRISPR-Cas9 patents, according to the final decision of the Patent and Trial and Appeal Board (PTAB) of the U.S. Patent Office of Febraury 15th, 2017. But on the opposite side of the Atlantic Ocean the situation is quite different, as the European Patent Office (EPO) has just issued the European patent EP2800811 in the name of the University of California, University of Vienna and Emmanuelle Charpentier.
Patent authorities in the U.S. and UE considered in a very different way the extent of the initial patent application filed in 2012 by the University of California, Berkeley (UC), researchers Jennifer Doudna and Emanuelle Charpetier (formerly at the University of Vienna) as for the inclusion of eukaryotic cells within the claims.
According to the European Patent Office, both prokaryotic and eukaryotic cells are part of the UC’s patent, while the PTAB’s decision states that there is no interference between this patent and the one filed some months later by Feng Zhang, a researcher at the Broad Institute.
“Broad provided sufficient evidence to show that its claims, which are all limited to CRISPR-Cas9 systems in a eukaryotic environment, are not drawn to the same invention as UC’s claims, which are all directed to CRISPR-Cas9 systems not restricted to any environment”, states the PTAB decision.
A person of ordinary skill in the art would not have reasonably expected a CRISPR-Cas9 system to be successful also in a eukaryotic environment, adds the PTAB.
In the US, the group lead by the University of California, Berkeley continues to support the position that the use of the CRISPR-Cas9 system in eukaryotic cells is not separately patentable from using the system in other cell types, and for that reason it is going to present a further legal challenge at the Appeal Court of the Federal Circuit
The CRISPR-Cas9 patent litigation might also deeply impact on the future of the pharmaceutical development, as CRISPR-Cas9 are a particularly innovative set of gene editing techniques allowing for the easy and fast modification of DNA.
The final allocation of patents protecting modifications of eukaryotic cells is critical to address the rights of use of such a technology on human cells.
Many different companies have been founded upon the work of Jennifer Doudna, Emanuelle Charpentier, Feng Zhang and the other researchers involved in the patent filing and subsequent dispute.
CRISPR Therapeutics,  Intellia Therapeutics, Caribou Biosciences and ERS Genomics are all companies supporting the UC’s appeal to the Federal Circuit, while Editas Medicine is borned upon the Broad Institutes’ research and benefits from the PTAB decision.