A few months back I wrote about the new exciting gene therapy tool, CRISPR/Cas9, and some of the actors behind its development:
I have been following this patent case for some time now and things are starting to escalate.
The patent dispute between MIT/Broad/Harvard vs. UC Berkeley has now gone to something which in the US is called an interence proceeding:
This happens when a party has filed a patent application and some one later claims to have priority (filed prior to that application). The odd thing here is that this case will subjected to the old rule under the US PTO as they recently changed and actually in the middle of the filings of the two parties in dispute.
To explain I bit technology wise as well. Both parties claim to cover CRIPSR and Cas9 broadly, that is for use in eukaryotes. However, only Zhang has described this quit clear and crystal in terms of patentability requirements. The issue then will be 4 scenarios the way I see it:
Either Berkeley and Doudna/Charpentier will be favored in the interference proceedings.
1. The US PTO then will have to examine the Berkeley patents. It will be granted, but only for prokaryotes as their broader claim IS NOT supported
2. The US PTO then will have to examine the Berkeley patents. It will be granted, also for eukaryotes as their broader claim IS supported
3. The US PTO then will have to examine the Berkeley patents. It will NOT be granted at all. The patent goes to MIT and Zhang for their application are re-examined (not sure about the rules her in the US, must be checked)?
4. The interference goes in favor of MIT and Zhang and it is a clean tabula rasa for the MIT/Broad/Harvard as the have more detailed coverage of eukaryotes and the US PTO has already examined and granted their applications.
Seems right now I am on track of something which potentially might be a real disaster for Berkeley? DuPont actually has a minor investment in Caribou which is one of the CRISPR spin-offs from Berkeley:
Also, quite recently, October 2015, DuPont and Caribou agreed upon a cross license where they would share CRISPR technology. DuPont has exclusive access to Caribou/Berkeley CRISPR/Cas9 technology (patents) within field of use agriculture.
Certainly the new DuPont/Dow merger will be strong within CRISPR and agriculture use! However, some of the 4 scenarios mentioned could be a disaster for this.
But how this is played out when this even escalates through the recently announced DuPont and Dow Chemical merger is going to be even more of a patent and intellectual property thriller to be told:
We will then have one of the largest actors within agriculture controlling one of the more important tools in biotechnology ever since we had the recombinant DNA invention by Cohen and Boyer.
To be continued.
Knut J. Egelie
Institute of Biology, NTNU
IPIN - Intellectual Property Institute of Norway, NTNU