The US Patent Trial and Appeal Board has come down on the side of Chinese-American synthetic biologist Zhang Feng (張鋒) and his team from the Massachusetts Institute of Technology (MIT) in a dispute over patents for gene-editing technology known as CRISPR.
In a ruling on Wednesday, the board’s judges said there was no “interference-in-fact” between the claims by MIT’s Broad Institute and Harvard, and the University of California, Berkeley.
“Broad has persuaded us that the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference,” the judges said in the ruling.
Providing sufficient evidence, the Broad Institute showed that its claims — which are all limited to CRISPR-Cas9 systems in a eukaryotic environment — are not drawn from the same invention as the University of California, Berkeley’s claims, which are all directed to CRISPR-Cas9 systems not restricted to any environment, the judges said.
The evidence shows that the parties’ claims do not interfere, which means the Broad Institute’s technique could be patented separately, the ruling said.
The University of California, Berkeley said it respects the “no-interference-in-fact” decision, but added that it still believes the use of the CRISPR-Cas9 system in eukaryotic cells is not separately patentable from the general application of the system in any cell type “as invented and claimed by the Doudna/Charpentier group.”
As such, the university said it would be carefully considering all possible legal options.
In May 2012, Jennifer Doudna of the University of California, Berkeley and Emmanuelle Charpentier, now at the Max Planck Institute of Infection Biology in Berlin, filed a patent application covering the use of CRISPR-Cas9 gene-editing technology in all cells, including prokaryotes and eukaryotes.
Charpentier and Doudna published their paper about CRISPR in Science magazine in June 2012, while Zhang published his in the same magazine in January 2013.
In April 2014, the US Patent and Trademark Office granted a patent to Zhang, who applied for it seven months later than Charpentier and Doudna, according to news reports.
It is believed that Zhang paid an extra fee to fast-track his application, shortening the process to less than six months, and was ultimately awarded a patent.
In April 2015, the University of California, Berkeley appealed to the office for what was called “patent interference,” claiming that Dounda’s patent application overlapped with Zhang’s.
Despite the legal battle, Doudna, Charpentier and Zhang shared last year’s Tang Prize in biopharmaceutical science for “the development of CRISPR-Cas9 as a breakthrough genome-editing platform that promises to revolutionize biomedical research and disease treatment.”
CRISPR is a promising technique for making specific changes in the sequence of DNA, which could be used to produce new treatments and even cures for genetic diseases.
The three scientists attended the Tang Prize award ceremony in Taipei in September last year, delivering speeches on the same stage. They expressed no animosity toward each other when they were asked about the patent issue.
In separate interviews with the Central News Agency at the time, the three said they did not see the dispute as personal or as an obstacle to future biopharmaceutical research using their methods.