UC Berkeley Loses One, Wins One in Gene-Editing Patent Fight

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Jul 16, 2021

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DNAGenome editing is a type of genetic engineering in which DNA (the “code” that determines the characteristics of living things) is inserted, deleted, or replaced in the genome of an organism.

A “genome” is an organism’s complete set of DNA.

Genome editing uses a tool called “molecular scissors” to break the DNA (which looks like a twisted ladder) and thereby “edit” it.

Better Living through Bioengineering?

As reported by the LA Times,

CRISPR is a powerful and relatively new gene-editing system that has revolutionized scientists’ ability to make precise changes in DNA.

It has been used in labs to correct for the mutation that causes sickle cell disease, create mosquitoes that can fight malaria in their bodies, and make crops more resistant to disease and drought.

As the LA Times notes, CRISPR was originally “invented” by bacteria. They and other tiny organisms have been using a similar technique in the natural world for hundreds of millions of years to attack viruses.

First to Invent

The first humans to use the technique were UC Berkeley biochemist Jennifer Doudna and her European colleague, Emmanuelle Charpentier. They published a paper on the topic in 2012, and their institutions — the University of California, Berkeley for Doudna and the University of Vienna for Charpentier — filed a US patent application for their method in 2013.

If the patent is issued, any biotech company that wants to use the method will have to get a license to use the patented method — and probably pay a fee for the privilege.

Other scientists at MIT and Harvard’s Broad Institute were also working on the same line of research.  Feng Zhang of the Broad Institute was the first to show how the CRISPR method could be used to change genes in in eukaryotic cells — the types of cells in plants and animals. 

Of course, since humans are animals, this application of the CRISPR technology is more likely to be profitable.

The Broad Institute filed a patent application for this method five months AFTER the first application was filed.

US patent law is based on a “first to file” system — whoever files first has priority over someone who files later, because the first filer is considered the true inventor.

The Broad Institute’s patent claims were (ironically) narrower than the earlier patent’s claims, and the later patent was granted first.


UCB and UV filed what’s called an “interference,” saying that the Broad Institute’s patent shouldn’t have been granted because it was “obvious” in light of the earlier patent application.

Broad disagreed. The Patent Trial and Appeal Board agreed with Broad, and its decision can be read here.

Doudna and Charpentier had put their own patent application on hold while the case against Broad was pending. It will now move forward.

Potentially, any company wanting to use the CRISPR technology would have to license both patents.

The patent rights are estimated to be worth billions of dollars.

Patent rights are also territorial, and the litigation discussed above covers only US patents.

In March, as reported in Fortune, the European Patent Office (EPO) has announced that it intends to grant patent rights to UCB and UV. With so much at stake, however, the EPO’s decision may also be challenged.

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