U.S. Appeals Court Upholds Patent Office Decision and Delays Resolution of Inventorship for CRISPR/Cas9 Gene Editing Technology

September 10, 2018:

ERS Genomics announced today that the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) has upheld the decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) to terminate the interference between certain CRISPR/Cas9 patent claims owned by the Regents of the University of California, the University of Vienna, and Dr. Emmanuelle Charpentier (collectively “UC”) and the Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively “Broad”). The Federal Circuit ‘affirmed’ the initial finding of the lower court thus ending the current appeal.

In its decision the Federal Circuit noted that “this case turns in its entirety on the substantial evidence standard,” which gives deference to decisions made by the PTAB when there is a mixture of evidence in the record. The decision went further to say “There is certainly evidence in the record that could support [UC’s] position,” but the appellate judges “do not reweigh the evidence.” The Federal Circuit makes clear that this decision “is not a ruling on the validity of either set of claims,” leaving open the issue of whether the Broad scientists were actually first to invent their claims to eukaryotic uses.

“We are disappointed that the Federal Circuit has further delayed addressing who was first to invent use of CRISPR in eukaryotic cells,” commented Eric Rhodes, CEO of ERS Genomics. “The Federal Circuit’s decision leaves open this issue, to finally be examined and decided at a later time. We feel confident that once the courts address this subject that it will become clear that the Charpentier/Doudna group were the first to unlock the true potential for CRISPR/Cas9 in genome editing across all organisms.”