Is the Broad Institute planning a last-ditch attempt to save their CRISPR patent?

Last month the EPO dismissed the Broad Institute's appeal (T 844/18) in the high profile dispute relating to one of the Broad Institute's CRISPR patents (EP2771468). At the hearing, the Board of Appeal deemed it unnecessary to refer the issue of priority to the Enlarged Board of Appeal (EBA). Many thought this would be the end of the road for the patent. However, in one last-ditch attempt to save their patent, it seems that Broad Institute is now laying the groundwork for a petition for review, the extraordinary legal remedy by which the EBA may review decisions of the Board of Appeal. None-the-less, even if the EPO amended the minutes in line with the Broad's requests, in this GuestKat's view there seems to be little prospect that the EBA would be willing to grant a petition for review.

Case Background

The Broad Institute's CRISPR patent (EP2771468) was revoked in opposition because of a clear-cut case of invalid priority under the established case law of the Boards of Appeal. At the appeal hearing the Broad Institute argued that the EPO's established approach to priority was incorrect and not in line with the provisions of the Paris Convention and EPC. However, the Board of Appeal (3.3.08) was not convinced by the Broad Institute's augments. The decision to revoke the patent in its entirety was upheld and the appeal dismissed. Despite early suggestions that they would be minded to refer the question of priority to the EBA, the Board of Appeal also rejected the Broad Institute's request for a referral to the Enlarged Board of Appeal (EBA).

Is there still life in EP'468?
What is a petition for review?

Petitions for review allow for the limited judicial review of Board of Appeal decisions by the EBA (Article 112a and Article 22(1)(c) EPC). The EPO has repeatedly stressed the strictly limited nature of this remedy. In particular, a petition for review should not, under any circumstances, be a means to review the substantive aspects of a case. One of the grounds for a petition for review is a fundamental violation of the right to be heard.

The vast majority of petitions for review are dismissed as "clearly inadmissible" by the EBA. Crucially, a petition for review will only be considered allowable if the grounds for review were raised by the petitioner during appeal proceedings (if there had been the opportunity for doing so) (Rule 106 EPC). Many petitions are considered unallowable because the petitioner could have raised their complaint with the Board of Appeal, but did not do so.

In a notable case (R 7/08), a petition for review was considered unallowable by the EBA because the minutes of oral proceedings did not mention that the petitioner had raised their objection with the Board of Appeal. The petitioner argued that the minutes were incorrect and that they had in fact raised the objection at the hearing. However, the petition was not allowed because the petitioner had not requested correction of the minutes. This brings us neatly to the Broad's proposed correction of the minutes for the CRISPR hearing.

The Broad Institute's proposed corrections to the minutes

The minutes of oral proceedings of the CRISPR hearing were published shortly after the hearing. The minutes currently record that at the start of day 3 of the hearing, the Board of Appeal stated that they were then of the view that the priority issue should be referred to the EBA. After hearing more arguments on priority from the parties, the Board of Appeal changed their mind that a referral was necessary.

The minutes are, of course, not a transcript of proceedings. Instead the minutes are supposed to contain the "essentials of the oral proceedings" (Rule 124 EPC). If a party believes that the minutes are wrong or incomplete, they may request correction of the minutes (Case Law of the Boards of Appeal, III.C.4.9.3). Exercising this right, the Broad Institute filed a request for correction of the minutes for the CRISPR hearing. All of the Broad Institute's proposed corrections relate to the issue of a referral to the EBA. It appears from the proposed changes that the Broad wishes the minutes to record that they were not given the opportunity to argue for a referral to the EBA despite requesting the opportunity to do so.

The first correction proposed by the patentee is for the inclusion of  a request made by opponent 1 on day 3 of the hearing. The minutes currently record that the Board of Appeal indicated on day 3 that they were minded to refer the issue of priority to the EBA. The patentee proposes that the minutes should be amended to include the argument from opponent 1 at this point that each party should be heard on the question of a referral to the EBA for each of the 3 questions concerning priority that were the focus of the hearing.

The second request for correction of the minutes relates to the patentee's procedural request for a referral to the EBA, should the Board of Appeal find against them on the priority issue. The patentee particularly proposes that the minutes should be amended to reference the patentee's mention of this previous request on Day 4, when it became apparent that the Board of Appeal was about to decide against the patentee on the issue of priority.

The patentee finally proposes that the minutes should be corrected to state that the patentee had understood, at the close of the hearing, that the Board of Appeal did not consider it necessary to hear the parties on the issue of a referral to the EBA.

The Broad Institute's requests for correction of the minutes appear to suggest that they are preparing to file a petition for review. In particular, the changes to the minutes seem to be in order to support (albeit weakly in this Kat's view) an argument that the rights of the patentee to be heard on the issue of the referral were violated, and that the patentee had raised this issue with the Board of Appeal. Even with the proposed changes, the Broad Institute would not be in a strong position if they do request a petition. They Broad would have to convince the EBA that they had the right to be heard on the issue of the referral, that this right was violated and that they raised this issue during appeal. Critics may dismiss any such attempt as a mere PR stunt. As mentioned above, the EBA rarely even considers petitions as admissible, let alone allowable. However, it seems that the CRISPR patent may be worth enough to the Broad Institute for them to none-the-less make the attempt.

The Opponents' response

The opponents 1 and 2 have already objected to the Broad Institute's proposed changes to the minutes. The procedure for such disagreements about the minutes of oral proceedings is not provided for in the Rules. As of today, the opponents have merely submitted that they dispute the need for the proposed changes. They further request that the EPO defers any decision to correct the minutes until the opponents have filed more detailed submissions.

Under what grounds might the opponents challenge the change to the minutes? The opponents may disagree that the corrections proposed by the Broad Institute are an accurate reflection of events at the hearing. Alternatively, the opponents may argue that the correction of the minutes would serve no useful purpose and that even with the correction, a request for a petition of review would be clearly inadmissible.

The EPO will be under pressure to resolve the dispute quickly. The deadline for filing a petition for review is 2 months from the Board of Appeal decision.

The case continues...

Further reading
Is the Broad Institute planning a last-ditch attempt to save their CRISPR patent? Is the Broad Institute planning a last-ditch attempt to save their CRISPR patent? Reviewed by Rose Hughes on Friday, February 14, 2020 Rating: 5

3 comments:

  1. Here's the thing:

    "...........it seems that the CRISPR patent may be worth enough to the Broad Institute for them to none-the-less make the attempt."

    My impression is that the patent is indeed worth enough to justify petitioning the EBA. I mean, what is the downside, apart from the expense, and the expense is, one supposes, miniscule in relation to the value of the patent. I mean, given the sums at stake here, how could you (as a business person sitting in the "Buck Stops Here" seat, decide NOT to petition?

    For me, what is remarkable about the tone of Rose's piece is the confidence with which she expresses her assessment of the prospects of success of any such petition. Practitioners before the EPO might like to reflect upon one of the privileges they enjoy, namely, to opine with confidence on what will be the outcome of any proceedings at the EPO. Patent attorneys in other jurisdictions (notably the USA) lack any such contented feelings of fulfilment of their duty to their client, that they can, even very early in the legal proceedings, reliably predict their final outcome.

    Three cheers for the clarity of the established case law of the Boards of Appeal of the EPO, a treasury of sound case law which is not being screwed up by the well-meaning but damaging interference of any Supreme Court that feels compelled to lord it over the experts.

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  2. It is not surprising that in the long run, the Broad Institute might file a petition for review.

    A quick look at the petitions for review shows that 183 were filed, whereby 11 are still pending.

    The success rate is rather meagre. In only eight cases the procedure was reopened and only in two of those a different decision came out

    Should the Broad Institute file a petition for review, I would agree with Rose that it has little chance to be admissible. A strong reason for this, is the fact that no objection under R 106 in respect of an alleged procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal.

    Should be deemed admissible, it has even less chance to be deemed allowable, as the discussion about the interpretation of “any” in Art 87(1) was extensive, and the BA really envisaged both alternatives, referral or not. That the final decision was not in favour of the Broad Institute can thus not be considered as a surprise. The appellant has been extensively heard on the topic, and trying to claim a procedural violation is tempting but vain. The EBA has made clear from the beginning of the petitions for review that its role is not to reopen any discussion on substance.

    There is a clear line of case law according to which a board of appeal considers that minutes represent a faithful account of events when the accuracy of the latter has not been challenged. See for instance T 2301/12, Point 2.4, where the discussion was about withdrawn or not withdrawn requests. This also applies in case of an alleged substantial violation, see T 1138/12, Point 13.4.1.

    It is thus not surprising that the Broad Institute tries first to obtain an amendment of the minutes. The board is however not obliged to amend the minutes, and before amending the minutes it will certainly hear the other parties to the proceedings and have its own recollection of the events, see for instance T 1934/14 II.

    Should in case of refusal of a correction of the minutes the Broad Institute request oral proceedings, such oral proceedings appears useless as the Board cannot be forced to amend the minutes. A further petition to review could then be filed, but with even less chances of being allowable, if at all admitted, as it could only relate to the possible decision not to amend the minutes.

    What is at stake here, is not money. It is a matter of principle. But claiming that any one of the original applicants can file a subsequent application claiming the priority of the original one, but leaving the other out, is quite daring, and not really acceptable. Refusing that the EPO checks the position of successor in title would make Art 87(1) irrelevant. The EPO is not there to adapt to US legislation, and there has been ample warning in view of previous cases and the existing case law in the matter.

    Thanks to Max Drei for its view of the value of the case law of the Boards of Appeal! One can only agree with his assessment. There is another point which US applicants should take notice, it is the strict stance on added subject-matter. But this is another story.

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  3. A brief comment on the alleged "pressure to resolve the dispute quickly". The time limit for a petition for review is NOT 2 months from the BoA decision. It is 2 months from NOTIFICATION of the decision.

    This is highly relevant because the BoA decision will be notified only together with its reasons, and usually this takes place a few months after the decision has been pronounced at oral proceedings. The T844/18 decision has not been notified yet (at least, there is nothing yet in the register). Most likely, the deadline for the petition for review will be in summer/fall 2020.

    ReplyDelete

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