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Breaking News – CRISPR/Cas9 Board of Appeal Hearing

This week saw the long-awaited Appeal Hearing for The Broad Institute’s CRISPR/Cas9 patent EP 2 771 468. The Board of Appeal yesterday (16-Jan-2020) decided to uphold the Opposition Division’s finding that the EP 2 771 468 does not have a valid claim to the two key priority documents. This results in the ‘Main Request’ of the patentee lacking novelty over the cited prior art documents, and the patent being revoked.

This is a landmark moment in the CRISPR/Cas9 patent battle that has been on-going for many years now at the European Patent Office (as well as in other jurisdictions). This could drastically affect the patent rights of one of the key players – The Broad Institute for this potentially revolutionary technology. By our count, the Broad institute currently has 25 European granted patents or patent applications which claim priority from the earlier of these key priority documents (US201261736527P filed 12-Dec-2012). All applications which have granted have opposition or appeal proceedings underway, and this decision will likely affect the outcomes of these.

The original opposition hearing of EP 2 771 468 took place back in January 2018, where the Opposition Division ruled the priority claims were invalid. We discussed the priority issues at the heart of the appeal in our Article back in June 2018 ‘Getting Priority Right in Europe’.

In short, at the original hearing the Opposition Division ruled (in line with established case law) that the EPO has the power to rule on priority and found that the priority rights of the two key priority applications were not validly claimed. This resulted in the key priority claims falling down, the patent becoming open to a number of novelty attacks and thus being revoked.

After the, by all accounts dramatic, 4 day hearing, the Board of Appeal agreed with the original Decision of the Opposition Division. Arguments had been presented from the Proprietor on three key arguments: (i) the EPO has no right to assess entitlement; (ii) interpretation of the phrase “any person” in Article 87 EPC and Article 4 Paris Convention; and “any person who has duly filed” should be according to the national law of where the priority application was filed, here the US.

At one point it was reported by several sources that The Board was going to refer several questions about the valid claiming of priority to the Enlarged Board of Appeal. This turned out to be false (it seems even Patent Attorneys can fall foul of “fake news”!), as whilst The Board had indicated they were minded to refer the questions, they were later persuaded by the opponents that this was unnecessary. A referral to the Enlarged Board would have delayed the final decision on this patent, and consequently many other patents, by several years. It seems the Board of Appeal agreed with the opponents in the end, and decided the law was in fact clear and a referral unnecessary.

We look forward to the publication of the minutes of oral proceedings and the written decision of the Board of Appeal, so we can read the arguments presented by the opponents and patentee at the oral proceedings. As well as the discussion on Priority, the arguments about the appropriateness of referral to the Enlarged Board may prove particularly interesting.