The high-profile patent fight over who invented a key feature of the genome editor CRISPR has been resurrected. The 3-year-old battle, which a U.S. appeals court appeared to have put to rest in September 2018, pits parties represented by the University of California (UC) against the Broad Institute of Cambridge, Massachusetts. It revolves around the use of CRISPR, originally derived from a DNA-cutting system used by bacteria, in the more complex cells of eukaryotes, which includes humans, making the contested patents key to the potentially lucrative development of novel medicines. After the U.S. Patent and Trademark Office awarded the Broad Institute several patents for the invention of CRISPR in eukaryotes, UC requested what’s known as an interference based on its own submitted patent. The Patent Trial and Appeal Board (PTAB) ruled against UC in February 2017, and the U.S. Court of Appeals for the Federal Circuit denied UC’s appeal 1 year later.
Now, based on new claims—the parts of a patent that dive into the specifics—by UC in April 2018, PTAB has ruled there is a potential interference that needs to be examined. Eldora Ellison, a lead attorney for the UC team who works at Sterne, Kessler, Goldstein & Fox in Washington, D.C., says PTAB ruled in 2017 there was no interference because the UC patent involved far-reaching claims of the CRISPR invention for many systems and the Broad Institute focused only on eukaryotes “What they said is, ‘We’re actually not going to have a fight at this point in time, because we think that these are two different inventions,’” Ellison says. “They kind of kicked the can down the road on who was first to invent the use of CRISPR in eukaryotes.”
But UC’s new focused claims led PTAB to declare an interference on 24 June.