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How important are UC’s two new CRISPR patents?

Zachary Silbersher

UC was recently awarded two patents on CRISPR technology.  UC is currently embroiled in a highly-watched dispute with the Broad Institute over who owns the heralded first patents covering CRISPR-Cas9 in plant and animal cells.  (We previously blogged about the dispute here and here.)  While that dispute remains pending, the question remains how important UC’s two new CRISP patents are?  How much will they impact the overall intellectual-property being claimed over the burgeoning CRISPR-Cas9 technology?

UC’s two new patents include:  (1) U.S. Patent No. 10,000,772 (“the ‘772 patent”); and (2) U.S. Patent No. 9,994,831 (“the ‘831 patent”).  UC can now say that it has staked a claim to a portion of the CRISPR-Cas9 intellectual-property estate.  That said, not all patents are have equal worth.  With breakthrough technology like CRISPR, the early patents that are essential for any licensees are usually the most critical—and thus most valuable. 

Right now, UC and Broad are battling over those very patents at the Federal Circuit, i.e., the use of CRISPR-Cas9 in eukaryotes.  By contrast, some commentators have already suggested that UC’s two new patents appear to be comparatively narrow.  It is far from clear whether they will be essential to any company seeking to implement CRISPR technology.  If they are not essential, and if CRISPR-Cas9 can be implemented by designing around them, then their value is likely limited.  Patents like these new ones may eventually make their way into a patent pool for CRISPR patents, but that will not likely impact the overall landscape.  

On the other hand, it appears that the ‘772 patent is indirectly related to UC’s ongoing dispute with Broad, which is currently pending on appeal before the Federal Circuit.  By contrast, the ‘831 patent is not related to that appeal.  This is a relevant factor to determining whether UC’s new patents are material.

The Federal Circuit case is itself an appeal of an interference proceeding previously before the Patent Office.  In that interference proceeding, UC argued that the inventions in its pending patent application (Application No. 13/842,859 (“the ‘859 application”)) preceded the inventions in numerous Broad patents.  The ‘772 patent is a continuation of the ‘859 application.  By contrast, the ‘831 patent does not claim priority to the ‘859 application.

The ‘772 patent is directed to optimizing guide RNA formats in certain environments, including eukaryotes.  Thus, the ‘772 patent may potentially cover a scope of technology that could be widely-used by companies implementing CRISPR-Cas9 into eukaryotes.  In that case, it could theoretically be very valuable from a scientific and commercial perspective.

Yet, from a patent perspective, the key point is that the value of the ‘772 patent probably hinges on whether UC prevails in the Federal Circuit appeal.  Because if UC loses that appeal, then that will essentially equate with a legal finding that UC did not invent applying CRISPR-Cas9 in the eukaryotic environment.  As we previously discussed, in UC’s interference proceeding with Broad, UC has argued that its ‘859 application covered the eukaryote environment, and thus rendered obvious Broad’s patents.  The PTO disagreed, and essentially held that even though UC’s ‘859 application claimed CRISPR-Cas9 in eukaryotes, UC’s application lacks adequate written description of that.  Thus, the PTO’s interference decision was essentially a finding that any patent issuing from the ‘859 application is likely invalid to the extent UC tries to enforce it against alleged infringers for use eukaryotes. 

Yet, using CRISPR in eukaryotes is where all the commercial potential for the new technology lies.  Thus, if the PTO’s interference decision is upheld on appeal, then UC—or any exclusive licensees of UC’s patents—will find it difficult to enforce any child patents issuing from the ‘859 application against the use of CRISPR-Cas9 in eukaryotes.  That would significantly mitigate the value of the ‘772 patent.