The history of the war between the MIT/Harvard Broad Institute, in Cambridge, Massachusetts and University of California, Berkely over the CRISPR/Cas-9 genome editing technology, can be traced back to 2013.
There have been various applications to patent the utility of CRISPR genome earlier from the likes of Northwestern University in September 2008 (Erik Sontheimer and Luciano Marraffini, 61/099,317); Vilnius University in March 2012 (Virginijus Siksnys and others, 61/613,373); UC Berkeley in May 2012 (Jennifer Doudna and others, 61/652,086); and ToolGen in October 2012 (Jin Soo Kim and others, 61/717,324). However, Broad and MIT were the first to describe the whole genome editing process with experimentation.
University of California sent a requisition to the USPTO to determine who invented the CRISPR first and to reconsider 10 of the patents granted to Broad Institute as they are contended not to own the same. In January 2016, a “Patent Interference” was filed by the University of Californina against Broad Institutions. And, on march 3rd this year, a list of proposed motions was sent to the PTAB (Patent Trial and Appelate Board). University of California further contended that Zhang’s books show only some experiments relating genome editing which is no clear proof of him inventing CRISPR. University of Californa further alleged Zhang, in its motion to the USPTO, that all of the Broad’s CRISPR patents were fraudulently obtained.
On March 15th, 2013 Jennifer Doudna of University of California filed for patent for her “invention” the CRISPR-Cas-9 along with Emmanuelle Charpentier. Seven months right after, on the 15th of October, Feng Zhang had applied for patent for the same invention he claims to be his and contends that he should be the owner of the patent for the same.
The day right after Doudna had filed for her patent, the US law had changed to be in consistence with the laws of the rest of the developed nations. This requires the Patent holder to be the first to have filed for the patent first and not the first person to have invented it; as opposed to the initial existing law which required the Patent Applicant to have been the first person to have invented the patent subject. With this amendment having no retropective effect.
But the problem is that, this case falls on either side of the date of amendment of the clause of the America Invents Act. Now, who-so-ever proves to have made the invention first, claims the Patent. The lab books of Doudna which dated back to June, 2012 showed that the CRISPR-Cas9 system of enzymes and RNA, cuts strands of DNA in a test tube at targeted sites.
Whereas, Zhang’s reports from January 2013 showed to have traced a different method which uses CRISPR-Cas9 not just to cut DNA but to edit(substituted one sequence of DNA for what the cells had originally) it, and not in naked DNA but in genes in the cells of mice and humans.
On January 11, 2016, the USPTO declared an Interfeerence proceeding as under 37 C.F.R. § 41.203(b) which is, Part 41 of the Code of Federal Regulations concering ‘Practice before Patent Trial and Appelate Board’. This named Feng Zhang and his colleagues as the junior party and Jennifer Doudna and her colleagues as thr senior party as per the first of the parties to file the patent.
Well, the issue cited here is not as superficial as it appears to be. It does not only question the fact concerning the ownership of the patent but also a likely winner of a noble Prize. Besides this, three existing companies use the technology of CRISPR-Cas-9 namely, Editas Medicine owned by Zhang, Doudna’s startup called Caribou Biosciences, and Charpentier’s CRISPR Therapeutics. Meanwhile, Zhang’s lab has set up a website and made laboratory materials widely available to other scientists.
As the case appears, this case may take years to resolve and if a party is dissatisfied with the decison, they may appeal resulting in pushing the final resolution date even further.
Representative Claims of both Parties…