[Guest post] Dramatic reversal in the CRISPR Broad Institute cases following G 1/22

In G 1/22 (and G 2/22), the Enlarged Board of Appeal (EBA) found that there is a strong rebuttable presumption that an applicant of a European patent application is entitled to claim priority. An interesting question following G 1/22 was the potential impact (if any) on the high-profile CRISPR dispute. The Broad Institute famously lost a highly commercially valuable CRISPR patent for invalid priority (T 844/18, IPKat). However, with the dramatic shift in EPO's approach to priority represented by G 1/22, would the Broad now have a shot at maintaining a patent in this family? 

Earlier this month, oral proceedings were held in the consolidated appeal cases T 2360/19, T 2516/19 and T 2689/19 relating to the Broad Institute's European platform patents for CRISPR/Cas9 gene editing technology. The only issue discussed was the formal priority entitlement. Whilst we await the written decision from the Board of Appeal, a Katfriend present at oral proceedings has provided IPKat with the following exclusive report:

"The appeals in T 2360/19, T 2516/19 and T 2689/19 were lodged against opposition division (OD) decisions to either revoke or drastically narrow down patents on the CRISPR/Cas-9 technology held by the Broad Institute et al. Priority entitlement was an issue because neither the priority co-applicant and inventor Dr. Marraffini nor his successor-in-title, the Rockefeller University, was named as applicant on the subsequent PCT applications. In such a fact situation, a patent arising from the PCT application does normally not enjoy priority under Article 87(1) EPC, as was confirmed in the previous case T 844/18 by the same Board in a different composition for exactly the same fact situation (IPKat).  

The crucial question was whether decision G 1/22 (and G 2/22) that was handed down by the EBA in October 2023 would reverse the priority assessment of T 844/18. In its Headnote I, the EBA on the one hand confirmed the EPO’s competence to assess whether a party is entitled to claim priority under Article 87(1) EPC. However, on the other hand, the EBA also held:

'There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Articles 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.' (Headnote I, second sentence)

In other words, by the “rebuttable presumption” approach, the burden of proof was shifted to the opponents. While before G 1/22, in case of non-identity of priority applicants and subsequent applicants, the patentees were obliged to demonstrate that they were entitled to claim the priority (e.g., in T 1201/14 even “beyond reasonable doubt”), it is now up to the opponents to “demonstrate that specific facts support serious doubts about the subsequent applicant’s entitlement to priority” (G 1/22, Reasons 110). 

Standing the case law on priority on its head

In the triple case at hand, the Opponents immediately realized the potential effect of the EBA decision and filed submissions pointing to evidence that, at the relevant PCT filing date, there was an inventorship dispute between Broad and Rockefeller, meaning that the latter did not agree with filing the PCT applications without them, which would imply that they did also not agree with claiming the priority for those PCT applications. In addition, the Opponents pointed to Rockefeller’s filing of a competing application with the USPTO for exactly the same subject-matter as one of the PCT applications, which was said to further support Rockefeller’s disagreement. Only after a later arbitration, a settlement was reached between these parties so that Rockefeller accepted not to be named on the PCT applications. The Opponents also argued that, in the cases at hand, if at all, only a weak presumption could apply since Broad could file the PCT applications with priority declarations complying with the formalities of Article 88 and Rules 52 and 53 EPC without the cooperation of the sidelined Rockefeller.

In the oral proceedings, the Patentees argued that the dispute between Broad and Rockefeller was only about inventorship and ownership, and not about priority entitlement. Rockefeller was even said to have had an interest in valid priority rights. Thus, there was an implied consent in claiming the priorities, a criterion that was also used by the EBA in G 1/22 in connection with the “rebuttable presumption”. 

The Opponents countered, inter alia, by referring to the basic principle of the law of evidence that, after having provided the prima facie case based on evidence that Rockefeller apparently disagreed with Broad’s priority claims, the burden of proof should have shifted to the Patentees to clearly demonstrate, beyond merely alleging a general implied consent, that Rockefeller indeed agreed with the priority claims. 

However, in the end, the Board agreed with Patentees and accepted validity of the claimed priorities. No reasoning was given in the oral proceedings. The Board also refused to refer questions of law to the EBA as had been suggested by two Opponents to clarify the conditions at which the “rebuttable presumption” applies. 

Analysis

As a first observation, the Board’s decision to accept the priorities can be regarded as an extreme interpretation of G 1/22. The body of evidence seemed quite clearly to be in the Opponents’ favour. In a preliminary opinion issued about one month ahead of the hearing, the Board even expressed its preparedness to accept validity of the priority claims based on the outcome of the arbitration as both a retroactive and implicit transfer of the priority rights. This approach might have been overcome by subsequent written submissions of the Opponents showing that, even under US law that was mentioned by the EBA as an example of valid retroactive transfers (G 1/22, Reasons 100), a retroactive transfer of rights is only acceptable as a confirmation of a preceding implicit transfer before the relevant date. Thus, Patentees must somehow have convinced the Board that there was a collaborative relationship between Board and Rockefeller before the PCT filing, enough to accept that the presumption of priority entitlement was not rebutted. It will be interesting to see how the Board will justify its decision in writing.

Although the EBA’s attempt to find in G 1/22 a pragmatic solution for the inflation of formal priority challenges in oppositions is appreciated, the Board seems to have overshot the mark in the three cases reported herein. This is so because the evidence on file proved that, at the relevant PCT filing date, the left-out priority applicant and his successor in title, the Rockefeller University, did not agree with filing the PCT application without naming them. In view of this, the question is now which evidence could ever lead to a valid rebuttal of the presumed priority entitlement. Hardly conceivable to find any. This, however, contrasts with the EBA’s conclusion that the EPO is competent to decide on priority entitlement. It will be interesting to see whether, in the near future, opponents will find a Board of Appeal who is more interested in finding a balanced approach that is in line with the established law of evidence principles and who might refer corresponding questions of law to the EBA to clarify how the EPO is supposed to exercise its competence to determine priority entitlement in accordance with Article 87(1) EPC". 

We now await the written decision from the Board of Appeal. 

Further reading

• EPO revokes CRISPR patent – a clear cut case of invalid priority? (Jan 2018)
• CRISPR hearing Day 4: Still a clear cut case of invalid priority, Broad Institute's appeal dismissed
• Aftermath of the CRISPR hearing - Highlights from the blogosphere (Jan 2020)
• Is the Broad Institute planning a last-ditch attempt to save their CRISPR patent? (Feb 2020)
• Highlights from the new EPO Guidelines for Examination 2024 (Feb 2024)