Aftermath of the CRISPR hearing - Highlights from the blogosphere

For the past couple of weeks, the patent news has been saturated with reports and commentaries on the Board of Appeal decision in the CRISPR hearing (T 844/18). Many readers may not have the time and/or enthusiasm to read all of these articles. However, what this Kat lacks in time she makes up for in enthusiasm, and provides your post-hearing highlights:

First, a case refresh...

The Broad Institute lost one of their fundamental CRISPR patents (EP2771468) in opposition because of a clear-cut case of invalid priority (IPKat: here). Article 87 EPC, based on Article 4(1) of the Paris Convention, specifies that any person who has filed a patent in a state party to the Paris Convention, or his successor in title, may claim priority from that application for the purposes of a subsequent EP application. The EPO interprets “any person” as meaning that all the applicants (or their successors in title) named on the priority application must be named on the subsequent EP application. The Broad Institute lost their CRISPR patent at opposition because an inventor of the US provisional application from which priority was claimed (or his successor in title) was not named on the PCT application.

News review

On appeal (T 844/18) the Broad Institute argued that the EPO's approach to priority was incorrect. The patentee’s arguments may be summarised as follows: (I) Entitlement to priority should not be assessed by the EPO, (II) the EPO incorrectly interprets the phrase “any person” in Article 87 EPC and Article 4 Paris Convention, and (III) US law should govern the interpretation of “any applicant” in Article 87 EPC when the priority application is a US provisional.

After hearing lengthy submissions on each of these arguments from the patentee and opponents, the Board of Appeal dismissed the Broad Institute's appeal. The Board of Appeal thus upheld the opposition decision that the priority claim was invalid, and that consequently the patent lacked novelty.

The patentee

Understandably, those on the winning side of the appeal have been most vocal with their opinions on the outcome. Conversely, law firms supporting the Broad Institute (including De Clerq, Bird & Bird and Brinkhof) have not provided any commentary. However, the Broad Institute itself issued a statement on the day of the decision. The Broad Institute echoed its previous statements that their patent had been dismissed by the Board of Appeal due to a “technical formality”. They were also eager to point out that “the majority of Broad’s CRISPR-Cas9 patents in Europe are not affected by this decision”. Licences for CRISPR technology in Europe are therefore likely to be largely unaffected by the Board of Appeal decision. 

The Broad Institute further did not waste an opportunity to take a dig at University of California Berkeley (UCB), their main rival in the CRISPR patent dispute. The Broad mentioned that they have “for seven years…made many attempts to engage University of California-Berkeley, directly and through their exclusive licensee and through patent pools. These efforts began before UCB licensed its IP exclusively and entirely to commercial entities”. Whilst the revocation of the Broad Institute patent EP2771468 is not a knock out blow, it will undoubtedly strengthen the side of UCB in any future negotiations. 

The opponents

The representative for Opponent 1, George Schlich, has published an in-depth review of the outcome of the hearing. From the point of view of many commentators, the simple take-home message from the hearing was that existing case law was followed. Schlich argues that the written decision of the Board will provide something more fundamental: “we will now get a more enunciated reasoning as to why the law and practice is correct and settled”.

Schlich notes that the argument from the Broad Institute that received the most attention was the that "any person" in Article 87(1) EPC and Article 4(1) of the Paris Convention should be interpreted as "any one of" the applicants of the priority application. The Broad Institute had submitted a declaration from no-less eminent a person than Lord Neuberger to support their interpretation of "any". According to Schlich, at the hearing the Broad Institute also referred to recent EPO law indicating that right to claim priority cannot be exhausted (T15/01). However, the Board of Appeal agreed with the Opponents that the right of priority is a single, indivisible right. Thus, the Board of Appeal concluded that the right cannot be divided or separated into multiple priority rights. Schlich makes the very pertinent point that the position of the EPO on this issue may henceforth be supported by the written rationale of Board of Appeal 3.3.08 (once we have the written decision), as opposed to a mere reliance on the argument that this just how it has always been done at the EPO.

The patent press

The appeal hearing attracted considerable coverage from parties not directly involved in proceedings. Those unlucky enough not to be able to attend in person were able to follow the semi-live tweets from observers. However, followers of the live reports will have been reminded of the old adage “it is not over until its over”, as reports that the Board of Appeal had referred questions on priority to the EBA, later proved incorrect [Merpel was particularly amused by the backtracking of certain patent news-outlets with regards to the "EBA referral" incident. Those reporting that the Board of Appeal had decided to refer, were subsequently forced to report a "dramatic reversal" that the Board no longer intended to refer]. 

Kilburn & Strode LLP (K&S) were very active commentators. In their report of the proceedings, K&S argued that the decision of the Board of Appeal may not, in fact, be the end of the matter. During the hearing, the Broad Institute had objected that there had not been adequate discussion on the decision of the Board of Appeal not to refer the questions on priority to the EBA. K&S propose that the Broad Institute may file a petition for review, on the grounds that there has been a fundamental violation of the Patentees’ right to be heard. The Enlarged Board of Appeal rarely find Petitions of Review admissible. Even when admitted, the majority of Petitions are usually rejected. 

JUVE patent summarises all of the parties involved in the European dispute. These included the experts called on to give their opinion of the case. In support of the Broad Institute, “Former UK Supreme Court judges David Neuberger and Leonard Hoffman, Matrix Chambers barrister Phillipe Sands, Joseph Straus, former chair of a EPO Board of Appeal Ursula Kinkeldey, and Swiss Federal Patent Court judge Tobias Bremi”, whilst on the side of the opponents “former German Supreme Court judge Klaus-Jürgen Melullis, former director of the United States Patent and Trademark Office David Kappos, and Rudolf Teschemacher, former chair of a Board of Appeal”.

Another welcome addition to the commentary is provided by Novagraaf, who take the opportunity to remind readers of the pitfalls that exist for US applicants of a European patent application. The US has less stringent priority requirements than the EPO. This is because the US understands priority as applying to inventions. Thus, a priority claim is valid in the US if the priority application and the application claiming priority has merely one inventor in common. Therefore, when a US provisional application is filed in the name of an inventor, in the US the inventor does not need to assign their rights to the applicant of the PCT application prior to the PCT filing date.

The Broad Institute is not alone in falling foul of the trap opened up by the differences in the US and European requirements for a valid priority claim. However, whilst not uncommon, the Broad Institute's error is remarkable for the magnitude of its commercial implications. In view of this, the decision of the Board of Appeal not to refer the issue of priority to the Enlarged Board of Appeal has been welcomed by many practitioners as a triumph of the rule of law over commercial interest and influence.

The EPO

The minutes of oral proceedings have now been published. The minutes are a summary, as opposed to a transcript of proceedings. The minutes confirm that at the start of Day 3, the Board stated that they were then of the view that certain question of law concerning priority should be referred to the EBA (IPKat: here). The minutes do not detail what changed the Board of Appeal's mind on the matter of the referral. The minutes merely mention that the referral was discussed with the parties. Unsubstantiated rumour has it that members of the EBA were seen lurking in the corridors of the EPO, perhaps keeping an eye on developments? The Board of Appeal came to their decision to dismiss the appeal on the fourth day (of the 5 days scheduled), following 2 hours 40 minutes of deliberation over lunch: (IPKat: here).

We now await the written decision of the Board of Appeal, which will provide their reasoning in full.

Further reading:

• The opposition decision: EPO revokes CRISPR patent – a clear cut case of invalid priority?
• The mysterious declaration: The Broad's CRISPR patent: The curious case of the missing declaration
• The statement of grounds of appeal: "Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal
• The Board of Appeal's preliminary opinion: BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18)
• Hearing, Day 1: The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage
• Hearing, Day 2-3: CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA?
• Hearing, Day 4: CRISPR hearing Day 4: Still a clear cut case of invalid priority, Broad Institute's appeal dismissed