Broad Institute dealt huge blow as fundamental CRISPR patent falls foul of EPO priority rules

The second article in our CRISPR series (the first article can be found on our website here) analyses the recent appeal hearing for patent EP2771468 (T 0844/18), owned by the Broad Institute, Massachusetts Institute of Technology (MIT) and Harvard College (the Patentees). In what was almost 2 years to the day when EP2771468 was revoked by the Opposition Division, the hearing took place before the Board of Appeal in Munich on 13-16 January 2020.

How did we get to this point?
In January 2018, EP2771468, viewed as the Patentee’s foundational CRISPR-Cas9 patent in Europe, was revoked in its entirety at an Opposition hearing due to lack of novelty, after it was argued that the patent was not entitled to its earliest claimed priority date.

Briefly, an inventor of Rockefeller University was named as an applicant on the priority documents but not as an applicant on the later patent applications and had not assigned priority rights to Broad, MIT and Harvard. Thus, the priority was not validly claimed. This changed the effective filing date of the patent, and therefore, the relevant prior art, which resulted in the patent being revoked for lack of novelty.

In a press release immediately after the proceedings had closed, the Patentees indicated that they would appeal the decision in order “to harmonize the international patent process, including that of the United States and Europe”.

The Appeal hearing
In what has been regarded by many as one of the most high profile cases of recent years, the Board of Appeal in their preliminary opinion concisely set out the case to be settled:

“A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is this priority claim valid even without any assignment of priority right from B to A? The appellants say that the answer is ‘yes’ and the respondents that the answer is ‘no’.”

The Patentee’s argued that:
1. Entitlement to priority should not be assessed by the EPO;
2. The EPO incorrectly interprets the phrase “any person” in Article 87 EPC and Article 4 Paris Convention; and
3. US law should govern the interpretation of “any person” in Article 87 EPC when the priority application is a US provisional.

The appeal commenced with the detailed linguistic analysis of “any person” according to Article 87 EPC. The Patentees argued that any “any person” should be construed to mean “one, some or all indiscriminately”, i.e. does not require every applicant of the priority application to be named on the application claiming priority. The Opponents, of course, disagreed with this argument and cited a long, established line of case law that made the interpretation of Article 87 EPC very clear.

These arguments lasted for a day and a half, and on Wednesday morning of the hearing, the Board of Appeal dropped the bombshell that they were minded to refer questions relating to the above three issues to the Enlarged Board of Appeal (EBA). The Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. Many interested onlookers were of the opinion this was absolutely not the case here.

The Opponents duly reminded the Board of Appeal that they had a duty to make a decision without referral as the case law of the EPO has been consistent in its interpretation of the Paris Convention to mean that the right to priority arises from the filing of the priority application and is a joint right in the event that there was more than one priority applicant, notwithstanding the fact that the EPC specifically provides complete, self-contained requirements for a valid claim to priority.

After appearing to sleep on it, the Board of Appeal resumed on Thursday morning of the hearing only to dramatically announce that they were in a position to rule after all and dismissed the appeal. The Board of Appeal agreed with the opposition division that the priority claim was invalid and the patent was revoked. The Board of Appeal declined to refer any questions to the EBA.

In what appeared to be a change of heart by the Board of Appeal, the Patentees will almost certainly feel hard done by as at least referral to the EBA looked to be a certainty and the saga looked set to continue for at least another couple of years.

What have we learnt and what is next?
We now eagerly await the Board of Appeal’s written decision that will provide its reasons for arriving at their decision.

The Patentees have issued a brief statement where they “urge all institutions to move beyond litigation and instead work together to ensure wide, open access to this transformative technology”. Some commentators have suggested that the patentee may file a petition for a review of the Board of Appeal’s decision, which could re-open proceedings. This, however, would be a long-shot at best in light of their brief statement.

All is not lost for the Patentees in Europe, however, as they have other patents pending appeal with the same aforementioned priority issues, so they have more opportunities to present (further) arguments in their quest to change the interpretation of Article 87 EPC, should they so wish. They also have other CRISPR-Cas9 patents in Europe not affected by this decision e.g. EP2825654 and other patents relating to CRISPR-Cas12/Cpf1.

The controversial nature and lucrative potential of CRISPR keeps a keen interest across many sectors and it seems at least the wider patent dispute is set to rumble on.

The take home message is that, ultimately, there is no change to current EPO practice that for a valid claim to priority, the applicant for a European patent is the applicant, or the successor in title to the applicant, who made the previous application. In short, the applicant must be entitled to claim priority at the time of filing the European or International application. If the assignment of the priority right cannot be effected before the filing date of the European or International application, or if the chain of title between successive applicants is not clear, the European or International application should be filed in the name of all of the applicant(s) who filed the first application whose priority is claimed. The European or International application can be transferred at a later time.

This comes as a timely reminder and the potential disastrous consequences of an invalid claim to priority.

Should you have any queries regarding the requirements for a valid claim to priority under the EPC, please do not hesitate in getting in touch!

Chris Hogg
Patent Associate