UC vs. Harvard: Round 2 in CRISPR fight
The University of California is fighting back in its quest to regain control over the rights to the powerful gene-editing technology known as CRISPR-Cas9.
On Monday, UC is arguing its appeal of the U.S. Patent Office’s decision in 2017 that the valuable patents on the revolutionary tool belong to the Broad Institute of Harvard and MIT, not to the University of California.
It’s a patent showdown between the two prestigious universities with perhaps a billion dollars at stake.
The scientific breakthrough – with the potential to cure countless genetic disorders from sickle cell anemia to cystic fibrosis – was devised by UC Berkeley cell biologist Jennifer Doudna and her European collaborator Emmanuelle Charpentier, but improved upon by Broad Institute’s Feng Zhang.
“We will continue to defend the brilliant work of Drs. Doudna and Charpentier,” said Ed Penhoet, special advisor to the chancellor at UC Berkeley and special assistant to the University of California president, in a prepared statement.
“The primacy of their foundational intellectual property must be protected,” he said. UC is arguing its case before the United States Court of Appeals for the Federal Circuit in Washington, D.C.
The CRISPR gene-editing tool gives scientists near godlike power: moving genes from one living creature to another. In a mere five years, it has transformed research into plant and animal breeding, treatment for hereditary disease and strategies for combating infectious disease and cancer.
UC asserts that patents issued to the Broad Institute interfere on a patent application filed six months earlier by Doudna and Charpentier, who is now at the Max Planck Institute.
The Patent Trial and Appeal Board ruled that Broad’s patents for CRISPR are sufficiently different from patents applied for by UC, and that they can stand.
It agreed with Broad’s assertion that its patents specified how CRISPR could be adapted for use in eukaryotic cells — that is, complex cells that include animal, plants, and humans — and Berkeley’s didn’t.
So Broad’s patents don’t interfere with the granting of Berkeley’s patents, and should be allowed to stand, it said.
Does UC have a shot? Not much of one, said patent experts consulted by STAT, an online journalism site about life sciences and medicine. The federal circuit has to give deference to the factual determinations of the Patent Board, according to these attorneys.
Persuading the appeals court that the patent board messed up on the law “is an incredibly tough barrier for them to break through,” said intellectual property expert Jacob Sherkow of New York Law School.
According to patent expert Dmitry Karshtedt of the George Washington University Law School, “Given that the PTAB decision was lengthy and seems well-reasoned, deference seems likely.”
The 2017 ruling cast a pall over the university’s future earnings from a transformative technique.
It limited UC’s use of the system to bacteria, not plants, animals and humans. Patents are most valuable if they’re useful in human medicine.
That is at odds with how UC and much of the science world view their work.
The UC’s invention in bacteria made it possible for Broad and other groups to apply it to animals, plants and humans, says UC.
“Once the Doudna-Charpentier team disclosed the CRISPR-Cas9 invention, they, along with Broad and four other groups, were quickly able to use conventional, off-the-shelf tools to employ CRISPR-Cas9 to cleave DNA in eukaryotic cells,” said UC’s lead attorney Donald B. Verrilli Jr., partner at Munger Tolles & Olson LLP and former U.S. solicitor general.
The global scientific community has widely recognized Doudna and Charpentier as inventors of CRISPR-Cas9 in any cell or environment, awarding such prestigious awards as the $450,000 Japan Prize, the $3 million Breakthrough Prize, the $500,000 Gruber Foundation Prize in Genetics, and others.
Published at Mon, 30 Apr 2018 18:39:43 +0000