Shifting Tides in the CRISPR Patent Battle: Strategic Moves and Procedural Implications

The longstanding intellectual property (IP) dispute over the Nobel Prize-winning CRISPR gene-editing technology has taken an unexpected turn, with the group representing Nobel laureates Emmanuelle Charpentier and Jennifer Doudna opting to revoke two key European patents. This decision, involving foundational European patents EP2800811 and EP3401400, highlights procedural issues and strategic considerations that go beyond ownership claims in the ongoing CRISPR patent saga.

 

A Decade of Dispute

Since Charpentier and Doudna’s ground-breaking CRISPR/Cas9 technology garnered global attention and a Nobel Prize, various entities, including the University of California, University of Vienna, and Charpentier (collectively known as CVC), have been in a patent race with the Broad Institute of MIT and Harvard. The Broad Institute initially secured the first CRISPR-related patent in the U.S. in 2014. However, CVC made strides in Europe, where its patents were upheld at first instance in opposition cases before the European Patent Office (EPO).

 

Despite these early successes, CVC faced setbacks. Recently, the EPO Board of Appeal issued preliminary opinions casting doubt on the validity of both patents on multiple grounds. In response, CVC filed requests to revoke the patents rather than proceed to oral hearings, thereby effectively canceling the proceedings. This move has drawn attention to strategic and procedural dynamics at the EPO.

 

Concerns Over Procedural Fairness or Tactical Move?

CVC’s legal team argued that procedural concerns prompted their revocation requests. They cited recent case law, particularly T 2229/19, in which the EPO Board of Appeal introduced a new approach that may limit the ability of patentees to respond to preliminary opinions by filing new claim sets. CVC contended that this approach could jeopardize its “right to be heard,” as it may prevent them from adequately addressing issues raised in the Board’s preliminary opinions.

CVC’s opponents, however, perceived the revocation request as a strategic maneuver to avoid an unfavorable ruling and protect CVC’s related patents from potential repercussions. They argued that CVC’s concerns about procedural fairness were merely a distraction, emphasizing that the issues highlighted in the Board’s preliminary opinions had been central to the case from the start and that CVC had ample opportunity to address them through previous filings.

 

Strategic Implications for Patentees

The procedural dynamics stemming from case T 2229/19 underscore the importance of timing and strategy when filing auxiliary claim requests with the EPO Board of Appeal. For patentees, CVC’s experience suggests a cautious approach: filing claim sets that preemptively address potential issues may avoid procedural pitfalls later in the appeals process.

 

The Costs of Revocation: Will CVC Bear Them?

CVC’s opponents are seeking reimbursement for costs incurred in preparing for oral proceedings and travel arrangements made before the revocation requests were filed. They argue that because CVC waited until shortly before the hearings to withdraw, they should bear responsibility for these expenses. However, CVC maintains that existing Board of Appeal case law generally allows patentees to file revocation requests at any stage, with the benefits of such withdrawals typically balancing any resulting costs.

 

The Board of Appeal’s decision on whether to apportion costs in this case may set a precedent for future patent disputes, impacting the financial and procedural calculus for patentees considering revocation.

 

Conclusion

This latest development in the CRISPR patent dispute sheds light on procedural and strategic complexities in high-stakes patent litigation, especially in cases involving cutting-edge technology with global implications. As this phase in the CRISPR saga draws to a close, the broader implications on patent ownership and licensing rights, as well as procedural considerations for future patentees before the EPO, remain crucial areas to watch.

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