A patent battle that has gone on for years finally came to an end earlier today (Sept. 10).
The US Court of Appeals for the Federal Circuit agreed to uphold a patent filed by the Broad Institute of the Massachusetts Institute of Technology and Harvard University on Crispr Cas-9 gene-editing in organisms with complex cells. The court ruled that the patent didn’t infringe on another Crispr patent filed two years prior by researchers at the University of California-Berkeley, which sought the licensing rights of using Crispr Cas-9 to work with loose DNA in test tubes. Both patents are therefore upheld, allowing both the Broad group and the Berkeley group to exclusively license their technologies.
Crispr-Cas9 is a gene-editing technology enabling scientists to cut and paste snippets of genetic information in strands of DNA. This ruling comes down to splitting the licensing rights on what the technique is used for.
In 2012, Berkeley scientists Jennifer Doudna and Emmanuelle Charpentier (who now works with the Max Plank Institute in Europe) invented the gene-editing technology, and filed patents focused on using it to edit RNA and shorter snippets of DNA in small organisms, like bacteria. Their patent was approved earlier this year.
In 2014, while the UC patent was pending, biochemist Feng Zhang and his team at the Broad Institute, a collaboration between MIT and Harvard, filed a rushed patent on the use of the Crispr gene-editing technique on more complex cells, like those that make up plants and animals. Their patent was approved in 2017.
The Berkeley team appealed the legitimacy of the Broad patent, claiming its use of Crispr infringed on their own patent. In April 2017, the Patent Trial and Appeal Board found the Broad application to be unique enough for its own patent. In the decision issued today, the appeals court upheld that decision, stating that the Broad team’s use of Crispr is non-obvious—a requirement for patents—and that there was a reasonable expectation that it wouldn’t work in larger animals from the get-go—proving its unique application of the technology. Doudna herself had stated that experiments that work in bacteria rarely work in more complex cells, according to STAT. The fact that Crispr-Cas9 was being applied to two completely different scenarios—one in a test tube, and one in living creatures—was deemed to be a different enough to merit two separate patents.
Crispr has huge potential for application in the biotech industry, and several companies have licensed technology from both groups, Bloomberg reports. DowDupont Chemical, for example, is trying to create soybean crops that don’t need pesticides. Charpentier’s company, Crispr Therapeutics AG, is licensing technology from Berkeley for use in developing new drugs. Editas Medicine, a group also working in pharmaceuticals, has teamed up with the Broad group, and paid over $10 million their legal fees.
The only way this legal battle could continue is if Berkeley appeals again to the US Supreme Court; it’s unclear at this time whether Berkeley intends to do so, or whether the high court would take the case if it did.