EPO Board of Appeal finds Broad Institute’s CRISPR patent to lack valid priority claim and upholds revocation of patent (T 0844/18)

This week’s hearing at the EPO concerning Broad Institute’s CRISPR/Cas9 patent was arguably one of the most high-profile appeals recently.

Despite the Board of Appeal  initially indicating that it was considering referring questions relating to the issue of priority to the Enlarged Board of Appeal, the Board ultimately took the view on the fourth day of the hearing that this was not necessary, apparently convinced by the opponents’ arguments and significant case law, and upheld the decision to revoke the patent.

Background:

• The patent, EP2771468, owned by the Broad Institute, MIT and Harvard College, was one of the earliest patents granted in Europe in the CRISPR technology landscape.
• It was revoked in 2018 by the Opposition Division for lack of novelty, after multiple oppositions contesting the patent’s priority claim from an earlier US provisional patent application.
• The earlier US provisional patent application was filed in the names of multiple inventors, one of whom was not named as an applicant in the later European patent application and had not assigned their rights to the named applicant – this is not in line with the EPO’s formal requirements for validly claiming priority.
• The Broad Institute argued for its entitlement to priority using Article 87(1) of the EPC which states that “any person” who has filed a patent filing can claim priority and claimed this includes any one of multiple applicants on the same filing.
• The Broad Institute appealed the Opposition Division’s decision, leading to this week’s hearing.

Key Issues:

1. Whether the EPO has the jurisdiction to decide questions of entitlement to priority;
2. What the meaning of the phrase “any person” is in European patent law; and
3. Whether the EPO should use the national law of the country in which the priority application was filed i.e. whether US law should be applied in this case.

Decision:

The Board of Appeal found the patent does not validly claim priority to the US provisional patent application and dismissed the appeal on the basis that:

1. The EPO does have the jurisdiction to decide on questions of entitlement to priority;
2. When there is more than one priority applicant, “any person” means all of the applicants of the priority application and thus the right to priority is a joint single right between them; and
3. National law in which the priority application was filed should not be applied whereas the Paris Convention, the EPC and EPO case law should be relied upon.

Significance:

• Legal clarity has been provided and previous EPO case law maintained – if the Board had otherwise decided the patent did have a valid priority claim, assessing valid priority claims for any patent/application would have become highly difficult as would determining prior art for each case.
• Applicants should take care when filing applications claiming priority, as there are fundamental differences in the requirements of different countries for a valid priority claim (notably in US and Europe). If you have any questions in relation to this, please do not hesitate to get into contact with one of our experts at Wynne-Jones IP as we would be happy to advise you.
• Despite the dismissal of this appeal, there is more to follow - many other related patents and applications owned by the Broad Institute are currently in dispute, but it is likely that with similar issues at stake, such cases will follow suit.
• As more and more patents related to CRISPR technology are being filed in Europe and with the EPO granting broad overlapping patents in the early CRISPR landscape, it is expected that this field will remain particularly contentious and uncertain.

Agnes Jung, Trainee Patent Attorney