21 januari 2020

Revocation of the Broad Institute’s CRISPR-Cas9 patent due to invalid priority upheld by Board of Appeal.

The CRISPR-Cas9 patent EP2771468 was previously revoked in opposition; the Board of Appeal agreed that the priority was indeed invalid due to lack of entitlement to priority.

The CRISPR-Cas9 system enables specifically editing genes within organisms and has therefore come to prominence in recent years due to its many potential applications. The Broad Institute has numerous patent applications directed to this technology; notably, the currently revoked patent and its divisional applications pursue the more fundamental aspects.

Article 87(1) EPC, based on Article 4(1) of the Paris Convention, specifies that any person who has duly filed a patent in any State party to the Paris Convention or WTC, shall enjoy priority from that application for the purposes of a subsequent EP application. The EPO traditionally interprets ‘any person’ as meaning that it is required that all applicants named on the priority application are named on the subsequent EP application – the subsequent EP application may have additional applicants, but may not omit any of the applicants of the earlier applications, unless their priority right is validly transferred to one or more different applicants before the filing date of the subsequent application. This is different in the US, where a subsequent application  only needs to have one inventor in common with the priority application.

The decisive ground for opposition stated that the US provisional priority application lists the original inventor Luciano Marraffini, but the subsequent EP patent lacks him as an applicant, or, absent this, an assignment of his priority right to any of the other applicants. The patent does therefore not fulfill the requirements of Art. 87(1) EPC, and priority is invalidly claimed. As a consequence the many publications disclosing the technology in detail within the priority year become prior art and novelty destroying for the claimed subject-matter. The patent must therefore be revoked.

On day 1 of the proceedings, the Board of Appeal initially planned to refer three questions to the Enlarged Board of Appeal for guidance:

  1. Whether the EPO should not assess priority entitlement,
  2. Whether the EPO’s interpretation of the term “any person” in Article 87 of the European Patent Convention is mistaken, and
  3. Whether the relevant national law should govern the assessment of entitlement to priority.

The Board however changed its mind the very next day about the need for a referral and upheld the revocation of the Broad Institute CRISPR/Cas9 patent.