The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage

Today was Day 1 of the Board of Appeal hearing on the validity of one of the Broad Institute’s patents relating to fundamental aspects of CRISPR technology. The simple question at the heart of the dispute between the Broad Institute and the opponents was summarised with admirable succinctness by the Board of Appeal in their preliminary opinion:

“A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is this priority claim valid even without any assignment of priority right from B to A? The appellants say that the answer is ‘yes’ and the respondents that the answer is ‘no’”.

IPKat heard from one Katfriend that a crowd of interested parties turned up bright and early for the start of the hearing at 9am. However, it seems that the Hearing did not actually begin until after lunch, with proceedings commencing at 1pm. As expected, the afternoon was devoted to clarifying the requests of the various parties in attendance, before moving on to the arguments concerning linguistic analysis of "any applicant" according to Article 87 EPC. 

Background: The CRISPR patent wars – simplified version

CRISPR-cas9 gene editing technology (“CRISPR”) provides a cheap, efficient and easy way to precisely modify genetic information. In the US, CRISPR technology is the subject of potentially the last great patent dispute of the first-to-invent era. The main players are the University of California Berkeley (UCB) and the Board Institute. The dispute in the US primarily relates to whether the Broad Institute’s invention of CRISPR in eukaryotic (e.g. human cells) was obvious in view of UCB’s invention of CRISPR in bacteria. The latest development in the US CRISPR patent dispute are covered over on IPwatchdog.

On the other side of the Atlantic, the legal facts of the European CRISPR dispute are very different. The Broad Institute lost one of their fundamental CRISPR patents (EP2771468) in opposition because of a clear-cut case of invalid priority (IPKat: EPO revokes CRISPR patent – a clear cut case of invalid priority?). Article 87 EPC, based on Article 4(1) of the Paris Convention, specifies that any person who has filed a patent in Paris Convention, or his successor in title, may claim priority from that application for the purposes of a subsequent EP application. The EPO, unlike the USPTO, 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. In the US, a priority application and subsequent application need only have one inventor in common (MPEP § 213.02).

IPKat desk of appeal hearing news
The Broad Institute lost their CRISPR patent at opposition because of a missing assignment from one of the inventors (Luciano Marraffini) listed on one of the US provisional priority applications. There has been considerable intrigue as to how such a catastrophic (although admittedly not uncommon) mistake was made. These intrigues have been accompanied by occasional bizarre interventions, including third party observations by a noted Australian soap opera character and the curious case of the missing declaration.

By way of colourful background, whilst opposition proceedings where ongoing, the Broad Institute and the Rockefeller University were locked in a patent dispute over whether the missing inventor, Luciano Marraffini, should be included as an inventor on the Broad’s CRISPR patent. The dispute was settled just before the opposition hearing and a press release to this effect was submitted dramatically during opposition oral proceedings. However, the press release was rejected by the OD for being late filed (and arguably wouldn’t have been much use anyway, given that the “same applicant” test would still not have been satisfied). The patent was therefore revoked for lacking novelty in view of prior art published after the provisional application but before the PCT filing.

The Broad Institute’s arguments on appeal

Despite fighting what many would see as a losing battle against a wall of EPO case law, the Broad Institute did not accept defeat with the opposition division decision and swiftly filed an appeal (T0844/18). The Broad Institute’s Statement of Grounds of Appeal (and the Opponents' responses) are well worth a read: "Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal. However, the patentee’s lengthy arguments may be boiled down to 3 main points: (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.

The Broad Institute argued that entitlement to priority should not be assessed by the EPO because the EPO was never meant to deal with property entitlement issues. Additionally, in perhaps one of their more audacious arguments, the Broad Institute argued that the EPO’s “same applicant” approach was in fact in contravention of a patentee’s human right to property. It was argued that a patentee’s human rights were contravened when a technicality such as an invalid transfer of a property right (the right to claim priority) destroyed the very property (the patent) itself.

The Broad Institute also argued that the opposition division incorrectly interpreted “any person” in Article 87 EPC (and Article 4(1) of the Paris Convention). “Any person”, according to the normal dictionary definition means “one, some or all indiscriminately”. Such a definition, the Broad Institute argued, does not require everyone of the applicants of the priority application to be named on the application claiming priority. The Broad Institute argument was supported by a declaration from no less eminent person than Lord Neuberger himself. However, the Board noted in its preliminary opinion that “the term ‘any person’ is ambiguous, rending attempts to elucidate the meaning of these provisions upon a purely linguistic basis difficult and most unlikely to succeed”.

In the third thread of their argument, the Broad Institute argued that “any person” and priority entitlements were not something that should be determined according to EPO law, but according to national law - in this case, US law. In their preliminary opinion, however, the Board of Appeal posited that the EPC provides a complete system for determining whether a priority right has been correctly claimed, and that issues may be resolved by the EPO without reference to national law.

A Katfriend at the hearing today reports that, after clarifying the parties submissions, proceedings began in earnest with a discussion of the meaning of "any person" from a linguistic perspective. Further discussion on this issue is expected tomorrow. 

Keeping an eye on the tweeters
The stage is therefore set for one of the most exciting Board of Appeal hearings of recent times. If the Opposition Division hearing is anything to go by, we can expect an interesting series of days to come. As a mark of the interest in the case, today's hearing included complaints of tweeting amongst the audience, something it seems the Board is keen to prevent. 

It is widely expected that the Board of Appeal will dismiss the appeal in view of the mountain of Board of Appeal case law in support of the current EPO approach. None-the-less, the Broad Institute have thrown a considerable amount into this fight, despite what many see as the limited chance of success. Will the EPO be swayed?

Stay tuned to IPKat as the hearings continue. 

Days 2 and 3: CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA? 

Image source: Desk of news - Breaking cat news
The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage Reviewed by Rose Hughes on Monday, January 13, 2020 Rating: 5

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