The appeal, which was filed at the US Court of Appeals for the Federal Circuit on 13 April, seeks to overturn the PTAB’s decision in the case between UC Berkeley and the Broad Institute, and reinstate interference.
Interference is a legal proceeding that determines who was the first to invent a technology.
Both UC Berkeley and the Broad Institute’s patents overlap in scope, but the PTAB found that the claims in the interference were separately patentable, and therefore terminated the interference.
Edward Penhoet, special adviser on CRISPR to the UC president and UC Berkeley chancellor, said: “Ultimately, we expect to establish definitively that the team led by Jennifer Doudna and Emmanuelle Charpentier was the first to engineer CRISPR-Cas9 for use in all types of environments, including in non-cellular settings and within plant, animal and even human cells.”
In response to the appeal, the Broad Institute said: “Given that the facts have not changed, we expect the outcome will once again be the same.”
“We are confident the Federal Circuit will affirm the PTAB decision and recognise the contribution of the Broad, MIT and Harvard in developing this transformative technology.”
It added: “Importantly, the Federal Circuit does not independently weigh the facts determined by the PTAB. To overturn the PTAB decision, the Court would need to decide that the PTAB committed an error of law or lacked substantial evidence to reach its decision.”
“Given the careful and extensive factual findings in the PTAB’s decision, this seems unlikely.”
Doudna and Charpentier ‘are the inventors’
The CRISPR system allows scientists to make precise changes in DNA, with a very high success rate.
Researchers have shown how the technology can be used to genetically modify mosquitoes to fight malaria in their bodies and pass that trait to their offspring.
UC Berkeley’s Jennifer Doudna, alongside Emmanuelle Charpentier, who now works at the Max Planck Institute for Infection Biology, claim to have invented the technology in 2012.
The University filed patent applications on their behalf covering the use of the technology in all cells, including prokaryotes and eukaryotes.
Soon after, Feng Zhang, of the Broad Institute, published research, showing evidence of using CRISPR in eukaryotic cells, which belong to plants, animals and humans. The Broad Institute then moved to patent the technology.
But UC Berkeley said that after Doudna and Charpentier’s publication of their research, “a person of ordinary skill” could adapt it to any type of cell.
The PTAB ruled: “The evidence shows that the invention of such systems in eukaryotic cells would not have been obvious over the invention of CRISPR-Cas9 systems in any environment, including in prokaryotic cells or in vitro, because one of ordinary skill in the art would not have reasonably expected a CRISPR-Cas9 system to be successful in an eukaryotic environment.”
UC Berkeley filed its first CRISPR-related patent application on 25 May 2012, while the Broad Institute filed its own six months later on 12 December 2012.
Since the ruling, the European Patent Office has announced its intention to grant two patents relating to CRISPR technology, one to UC Berkeley and another to CRISPR Therapeutics, which is led by Charpentier.
UC Berkeley said it will continue to pursue patent applications in the US, alongside its European patents. It has already been granted a patent in the UK.