On February 15, 2017, the U.S. Patent Trial and Appeal Board (the “Board”) issued a decision in a dispute concerning certain patent rights over a genome-editing system, known as CRISPR-Cas9. CRISPR-Cas9 is a system that allows scientists to edit genes with more precision and ease than prior approaches.
MIT, together with the Broad Institute and Harvard, holds 13 patents for CRISPR-Cas9 based on research led by Professor Feng Zhang, a professor of neuroscience at the McGovern Institute for Brain Research at MIT and a core member of the Broad Institute. Scientists at the University of California at Berkeley and the University of Vienna (together, “Berkeley”) have also done critical research on CRISPR and had filed a patent application stemming from their research. After the Broad patents were issued, Berkeley asked the U.S. Patent Trial and Appeal Board to “declare an interference” between the Broad’s patents and Berkeley’s application. An “interference” is a procedure invoked when one party claims that an inventor with a patent on a specific invention “interfered” with the claim of another inventor with a patentable claim to the same invention.
Here, Berkeley claimed that the Broad’s patents interfered, or overlapped, with the claims in Berkeley’s patent application. The Board agreed to begin interference proceedings, and the parties submitted voluminous briefs and expert reports addressing whether the claims identified in Berkeley’s patent application were the same as those in the Broad’s patents.
After a hearing held on December 6, 2016, the Board ultimately issued a decision finding in favor of the Broad Institute, MIT, and Harvard. The Board concluded that the claims in the Broad’s CRISPR-Cas9 patents, which specify the use of the CRISPR-Cas9 system in eukaryotic (such as mammalian) cells, are distinct from the claims in the Berkeley patent application, which cover the use of CRISPR-Cas9 without any environmental restriction. Because they are distinct, the Board concluded that there is no interference or “overlap” between the parties’ inventions. In doing so, the Board concluded that, at the time of the Broad patent application, the use of CRISPR-Cas9 systems in eukaryotic cells was not obvious and there was no reasonable expectation that the CRISPR-Cas9 system would be successful in a eukaryotic environment.