CRISPR: Written decision by the Board of Appeal of the European Patent Office
CRISPR: Written decision by the Board of Appeal of the European Patent Office
The so called ‘CRISPR’ case, being an opposition appeal case at the EPO, in principle is a case like many others. In opposition, a European patent relating to the CRISPR technology had been revoked. According to the EPO Opposition Division priority was invalidly claimed, and as a result the patent lacked novelty in view of a document published by the proprietor in between the priority date and the filing date of the European application. The proprietors were not amused and filed an appeal. Although the oral proceedings were held already back in January 2020, the written decision was only published early November 2020, confirming the revocation.

The opposed patent was based on a PCT application which claimed priority from several US provisional applications each having several inventors/applicants. The main issue in the opposition proceedings related to the validity of the priority claim. Different from the situation in the US, according to established EPO practice a priority claim of a European patent application is invalid when not all the applicants of the priority application are among the applicants of the subsequent European application. For the CRISPR application this was the case; the fact that the missing inventor/applicant was, under US law and according to the proprietors, not an inventor of the subject-matter claimed in the European patent was deemed irrelevant.

The EPO opposition division already thoroughly analyzed the vast amount of arguments brought up by the proprietors, relating to the power of the EPO to assess entitlement to the right of priority, the meaning of the wording “any person” in the context of legal provisions relating to priority (Art. 87(1) EPC), and the law under which the validity of the priority date should be assessed (US law, the European Patent Convention, or the Paris Convention). In the end, the opposition division considered the priority claim invalid. Although an invalidly claimed priority as such is not a ground for revocation, in this case the European patent, with the “new” effective date, was revoked for lacking novelty in view of prior art published in the priority year by the proprietor.

Because of the high stakes as mentioned, the proprietors filed an appeal. Last January, on the fourth day (!) of the oral proceedings, the Board of Appeal decided to dismiss the appeal and to agree with the opposition division that the priority claim was invalid. As was already to be expected, the Board of Appeal did not deviate from the established EPO practice.

Nevertheless, news relating to this case was posted as ‘Breaking news’ on patent related blogs. The reason not being the point of law under discussion, but actually because of the patented technology as it is a revolutionary and Nobel-prize winning gene editing technology for which the stakes are high regarding ownership of crucial patents. In particular in the US, but also in Europe this technology is the subject of many (patent) lawsuits.

In anticipation of the possibility to file a petition for review at the Enlarged Board of Appeal, the discussion however continues. Arguments related to the correctness of the minutes were already submitted by the proprietor before the written decision was issued...

Considering the large amount of patents and patent applications on this technology, this decision will certainly not be the end of the patent disputes relating to the CRISPR technology.