European Patent Office Upholds Revocation of CRISPR Patent Due to Applicant Listing on Parent Applications

March 5, 2020

On January 16, 2020 the Board of Appeal at the European Patent Office made an important decision that relates to CRISPR gene editing technology (EP 2771468). The Broad Institute lost this patent due to an issue with a “same applicant or successor in title” (SAOSIT), under European law.

This is a serious development as the battle for CRISPR patents intensifies. The European Patent Office (EPO) will be issuing their reasons for revoking European patent EP 2771468 after siding with the EPO Opposition Division, which revoked the patent in view of prior art. The prior art is relevant because the Opposition Division did not recognize the patentee’s claim to priority from a US provisional application that named more applicants than the European patent, since there was determined not to be the SAOSIT.

By understanding the Opposition Division’s position and how to properly claim priority, we can avoid the same fate as patent EP 2771468. The Opposition Division’s decision stated that the right of priority is a single, indivisible right. An applicant in a subsequent filing must be the applicant of the priority filing. When there are multiple applicants, the priority rights of all applicants must be introduced into the subsequent filing. That is, the single priority right of multiple applicants must be transferred by each applicant signing over their rights.

Lesson learned… we recommend using the ADS procedure to identify all applicants. The US provisional application that the Broad’s European patent claimed priority to failed to list non-inventor applicants in an application cover sheet. By filing an ADS instead, we can accurately list all applicants, as well as easily update that list.