The following statement about today's U.S. Court of Appeals decision on the University of California's patent interference claim before the Patent Trial and Appeal Board may be attributed to Charles F. Robinson, Office of General Counsel, UC Office of the President:
The U.S. Court of Appeals today concluded that the use of CRISPR-Cas9 in plant and animal cells is separately patentable from Drs. Doudna and Charpentier's invention of the use of CRISPR-Cas9 in any environment, and on that basis affirmed the dismissal of an interference proceeding to determine whether Broad or UC is entitled to patent claims specifically covering use of CRISPR-Cas9 in eukaryotic (i.e., plant and animal) cells.
While disappointed that the court did not allow the interference to go forward to resolve this issue, we are gratified that, consistent with the consensus of the scientific community, the court acknowledged that the Doudna-Charpentier team's publication of their work in a 2012 paper in the journal Science (Jinek et al) represented a "breakthrough in the art" of gene editing, by first showing how the CRISPR-Cas9 system can be used as genome-editing technology in any environment.
The court did not address the question of who invented the specific use of CRISPR-Cas9 in eukaryotic cells, and emphasized that its decision was "not a ruling on the validity of either" Broad's or UC's claims. The decision thus does not preclude other proceedings, either in the U.S. Patent and Trademark Office or in the courts, by which UC may seek to establish that it is the actual inventor of use of the CRISPR-Cas9 system in eukaryotic cells.
Accordingly, we are currently evaluating our further legal options in the courts and/or the USPTO.
Lastly, we are pleased that the USPTO will continue to issue patents to UC for its foundational technology relating to the use of CRISPR-Cas9, including its use in any environment. As it has for 150 years, UC will translate this and its many research discoveries for the public good. UC has a policy of openly licensing technologies to non-profits and educational institutions and has licensed CRISPR-Cas9 technology so that it now is used by multiple companies currently working to accelerate breakthroughs in human therapies. Our commitment to develop and apply CRISPR-Cas9 for the betterment of human kind is unchanged by today's decision.