Posted on 24/1/2020

Priority before the EPO – The CRISPR Appeal

The Boards of Appeal held a hearing on the validity of patents for CRISPR technology.

Last week the EPO Boards of Appeal held a 4-day hearing on the validity of one of the patents held by the Broad Institute of MIT and Harvard, a biomedical and genomic research centre, on fundamental aspects of CRISPR technology.

CRISPR is a relatively simple, efficient and inexpensive technology for accurately modifying DNA sequences and genetic information. It is a hugely valuable technology, and has been the subject of a lengthy dispute on both sides of the Atlantic, predominantly between the Broad Institute and the University of California Berkeley (UCB). In the US, the issue has been one of obviousness over an earlier UCB document. However, in Europe, the issue is very different.

The question at the heart of the dispute before the EPO was this:

“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’”.

Article 4(1) of the Paris Convention specifies that any person who has filed a patent in a country signed up to the Paris Convention, or his successor in title, may claim priority from that application for the purposes of a subsequent EP application.

The problem arises out of the interpretation of “any person”. The EPO, unlike the USPTO, interprets “any person” as meaning that all of the applicants (or their successors in title) named on the priority application must be named on the subsequent European application for the priority claim to be valid. In contrast, in the US, a priority application and subsequent application needs only to have one inventor in common.

In this case, not all of the applicants from the priority application were also named on the subsequent European application, due to a missing assignment from one of the inventors listed on one of the US provisional priority applications. While this is not an issue before the USPTO, it presents a problem before the EPO.

This had the effect that the priority claim was invalid, so during opposition, the patent was revoked for lacking novelty over prior art which had been published after the priority application, but before the PCT application was filed. Despite EPO case law and precedent being against them, the Broad Institute appealed (T0844/18).

The Broad Institute’s main arguments were essentially threefold:

(i) Entitlement to priority should not be assessed by the EPO, as the EPO was never meant to deal with property entitlement issues; (ii) the EPO incorrectly interprets the phrase “any person” (so not all applicants named on the priority application had also to be named on the European application); and (iii) US law should govern the interpretation of “any applicant” when the priority application is a US provisional application.

The Broad Institute also argued that a patentee’s human rights were contravened when a technicality – such as an invalid transfer of a property right (i.e. the right to claim priority) – actually resulted in the destruction of the property (the patent).

The appeal was given even more intrigue by the filing of third-party observations, which were purportedly filed by a certain Harold Bishop of Ramsey Street, a character from Neighbours.

The appeal was given even more intrigue by the filing of third-party observations, which were purportedly filed by a certain Harold Bishop of Ramsey Street, a character from Neighbours.

However, despite rumours that the Board of Appeal was going to refer the questions up to the Enlarged Board of Appeal for clarification of the legal position, they ultimately did not. Instead, they agreed with the opposition division that the priority claim was invalid, and dismissed the appeal by the Broad Institute. The patent was therefore revoked for a lack of novelty.

There are also a number of further divisional applications in the same patent family, to which this decision will also be of great significance. Therefore, if there are multiple applicants on a priority application, make sure that all of those applicants are also named on any application claiming priority from it.

If you would like to discuss any of the matters raised in this case, please get in touch to speak to one of our patent attorneys.

Wilson Gunn