Clearing a way through the CRISPR patent jungle

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The revocation of Broad Institute’s patent EP2771468, marks the latest major development in a series of patent battles over the revolutionary and highly lucrative CRISPR- Cas 9 technology (and other gene editing technologies) in the US and Europe. While this is the first EPO decision in an opposition procedure concerning the Broad patent portfolio, the outcome may have implications for other related patents as the rationale for the revocation reflects a larger, systemic challenge based on the different rules regarding priority claims in different jurisdictions. This is a rather complex legal issue, but with potentially important implications in practice that require patent applicants to be very careful as to when they assign their patent application. The Broad Institute has already made clear that it intends to file an appeal at the EPO, which again highlights the commercial relevance of the CRISPR patent concerned.

At present, there exist already more than 1,700 applications for CRISPR patent families, i.e. sets of patent applications covering the same or similar technical content that have been filed in different jurisdictions. Every month around 100 new families are published. Hence, researchers and companies looking to commercialize CRISPR–Cas9 gene editing and comparable techniques will probably continue to face a very complex, highly fragmented patent landscape for the next decades. Typically, patent claims will become narrower and may be harder to enforce. This may trigger some inventors rely on trade secret protection or alternative business models rather than patents.

The recent EPO decision stresses the importance of harmonizing material and procedural patent rules in order to simplify the international protection of valuable patent portfolios and to create legal certainty for patents practitioners, industry, scientist and society at large. Whereas the EPO CRISPR decision focuses on priority claims, co-inventorship and assignments, the need for harmonization obviously goes beyond this essential, but very specific topic. It also entails the need to clarify the scope of research- and experimental use exemptions, the legal concept of co-inventorship, as well as the demand for some more extensive guidance on patent pledges, ethical and joined licensing initiatives and the creation of user-generated solutions. In a series of short contributions we will debate some of these notions, starting out with user-generated licensing models´.
TidsskriftLife Sciences Intellectual Property Review (LSIPR)
Udgave nummer8/5 2018
Antal sider4
StatusUdgivet - 2018

ID: 195556878