Broad Institute Crispr: Epo Patent Revocation Lessons for Claiming Priority to Provisional Applications

• Publication year: 2020
• Author: D. Benjamin Borson

Broad Institute CRISPR: EPO Patent Revocation Lessons for Claiming Priority to Provisional Applications

D. Benjamin Borson

Borson Law Group P.C.

SUMMARY

This article provides a brief summary of the revocation by the EPO of EP 2,771,468 (EP '468 patent). The EP '468 patent is drawn to use of CRISPR technology for gene editing in eukaryotic cells. The EP '468 patent named The Broad Institute, MIT, and Harvard College as Applicants. The patent was opposed by Novozymes A/S, CRISPR Therapeutics GG and others.

The EP '468 patent claimed priority to 11 US provisional patent applications. The 11 provisional applications named 4 common inventors, and for 4 other provisional applications, an additional inventor was named from the Rockefeller University.

Rockefeller University was not a named Applicant of the EP patent application. The EP patent application claimed priority to all 11 US provisional applications.

After entry in the EP Regional Phase, the Opposition Division (OD) of the EPO issued a formal opinion, in which the claims were found to lack novelty or inventive step because the OD found that the '468 patent was not entitled to its asserted priority claim, and that prior art destroyed novelty and inventive step.

The Paris Convention permits provisional patent applications to be filed and to claim priority to the provisional applications in non-provisional applications. Paragraph IV of the Paris Convention and Article 87 EPC provide that the priority to an earlier-filed application can be validly claimed by the prior applicant or the successor in interest, i.e., someone who has the right to claim priority.

US law requires patent applications to be filed in the names of the Inventors, and the EPO requires that there are assignments to the PCT or EPO Applicant prior to filing a PCT application, although a PCT application can be filed naming each of the Inventors as Applicants.

Based on these rules, to validly claim priority, all of the entities having ownership of the invention (Broad Institute, MIT, Harvard College, and Rockefeller University) must be named Applicants when the PCT application was filed. Because Rockefeller University was not an Applicant, the claims of priority to 4 of the US provisional applications listing the Rockefeller inventor were not valid. The Opposition Division held that the named Applicants could only validly claim priority to one of the US provisional applications (US 61/758,468: US '468). However, as of filing date of this provisional...