US Appeals court reverses USPTO decision to invalidate five CRISPR patents

Five patents relating to groundbreaking gene editing technology cannot be quashed by interference proceedings used in previous US patent system
SNIPR Biome's state-of-the-art BSL2/GMO2-classified laboratory in Copenhagen

SNIPR Biome's laboratory in Copenhagen Courtesy of SNIPR

The US Court of Appeals for the Federal Circuit has reversed a Patent Trial and Appeal Board (PTAB) decision that invalidated five patents directed to the pioneering gene editing technology CRISPR.

The precedential opinion, SNIPR Technologies v Rockefeller University issued on 14 July, said that the patents owned by biotech company SNIPR Biome, were covered by the “interference-free” America Invents Act (AIA).

The AIA was introduced in 2011 and changed the US patent system from a ‘first-to-invent’ to a ‘first-to-file’ system for determining patent priority.

When the new act was introduced “interferences” – administrative priority contests from the previous regime – were eliminated.

In 2021, The PTAB had declared an interference between SNIPR’s five patents and a first-to-invent patent application from Rockefeller University that resulted in the cancellation of all claims of SNIPR’s patents.

SNIPR appealed, contending that PTAB never should have subjected its first inventor-to-file patents to a vestige of the old system: an invention date contest against Rockefeller’s first-to-invent application through an interference.

The opinion notes that the AIA makes clear “that interferences and other first to-invent aspects of pre-AIA law do not apply to patents exclusively governed by the AIA and issued under the new first-inventor-to-file regime.”

The precedential opinion restores SNIPR’s patents because “pure” AIA patents may not be part of the interferences and, as such “the director erred by declaring an interference involving the SNIPR patents.”

The opinion concluded that Rockefeller’s and the PTAB’s remaining arguments were “unpersuasive”.

Morrison Foerster represented SNIPR and was led by appellate attorneys Brian Matsui and Seth Lloyd, with patent prosecution partner Janet Xiao, patent litigation of counsel Parisa Jorjani and patent litigation senior counsel Matthew Kreeger.

The team said the court held that the AIA replaced the “statutory provisions authorising interference proceedings from the Patent Act and eliminated invention priority, the core issue in an interference, as a requirement for patentability.” Instead, the AIA requires that the patent applicant be the first inventor to file.

Co-founder and CEO of SNIPR Biome, Christian Grøndahl, commented: “SNIPR was the first company to receive a patent for the use of CRISPR to target and modulate bacterial genomes, and we now have an extensive intellectual property portfolio, comprising more than 60 granted patents worldwide. 

“The applications of CRISPR are continuing to expand, and we are applying our knowledge of CRISPR to develop innovative therapeutics that leverage our pioneering efforts in microbial gene editing, in order to address serious and difficult-to-treat diseases.”

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