The Broad Institute of MIT and Harvard owns several key patents related to the CRISPR technology. One such patent is EP2771468 (“EP ‘468”), which relates to a fundamental aspect of the CRISPR technology in eukaryotic cells. EP’468 was granted in February 2015 and opposed by nine opponents. Following an oral hearing in January 2018 the Opposition Division of the EPO revoked the patent due to lack of novelty over two pieces of intervening art, i.e. documents published after the earliest priority date. These two documents became part of the state of the art after it was decided that the application was not entitled to its earliest two priority dates.
The Broad Institute has appealed the Opposition Division’s decision. Their grounds of appeal rely on attacking the EPO’s current approach to determination of priority entitlement.
The EPO applies an “all applicants” test for priority. The right to claim priority belongs simultaneously and jointly to applicants when there is more than one. The right to claim priority to the two earliest applications belonged simultaneously and jointly to Mr Zhang, Mr Cong, Ms Habib, and Mr Marraffini, yet neither Mr Marraffini nor his successor in title (Rockefeller University) were named as applicants on the PCT, and neither had assigned his right to claim priority to any of the named applicants. The PCT could not, therefore, validly claim priority to the two earliest applications, and thus EP ‘468 was deemed to have a priority date of 30 January 2013.
The Broad Institute asserts that the EPO cannot competently assess priority entitlement. It argues that the EPO does not have the authority to determine a right to claim priority and thatonly national courts have jurisdiction over this question, as only national courts can assess entitlement to a patent or application itself.
Secondly, the Broad Institute has contended that the all applicants test used by the EPO is an incorrect interpretation of Art. 87 EPC. According to the Broad, the provision should be interpreted as “any one person who duly filed the priority application can validly claim priority”.
Finally, the Broad Institute considers that national law should govern who is “any person” in Art. 87 EPC. They have submitted that the “status as applicant is necessarily linked to the country of origin, as this is where the priority right arises”.
The Broad Institute has requested referral of the question of the right to claim priority to the Enlarged Board of Appeal. It is not clear that the conditions for referral have been satisfied, however, so it is not likely we will see an EBA decision on this question.
This is further evident from the fact that the Opposition Division was entirely unconvinced by the Broad’s arguments in opposition proceedings. In the reasons for the decision the Division pointed out that the EPO cannot allow a situation wherein two applicants could jointly file a priority application and then separately file their own subsequent applications claiming priority to the earlier application; there would then be two identical applications, with potentially identical claims, which could very well mature into identical patents. The Opposition Division considered that this situation would be entirely against the public interest, and was strongly in favour of keeping the all applicants test in order to avoid this situation. A five-day hearing is scheduled for January 2020.
Article authored by CMS trainee Ella Wells.