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The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) declared an interference between certain pending US patent applications

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) declared an interference between certain pending US patent applications co-owned by The Regents of the University of California, the University of Vienna, and Emmanuelle Charpentier (collectively “CVC”) and the Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively “Broad”), all of which are related to the use of CRISPR/Cas9 genome editing technology in eukaryotic cells. Specifically, the PTAB has declared Patent Interference No. 106,115 (the “’115 Interference” or the “Second Interference”) between CVC’s pending US Patent Application Nos. USSN 15/947,680; 15/947,700; 15/947,718; 15/981,807; 15/981,808; 15/981,809; 16/136,159; 16/136,165; 16/136,168; and 16/136,175; and the Broad’s US Patent Nos. 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993,233; 8,999,641; 9,840,713, and US Patent Application No. USSN 14/704,551. The PTAB has initially designated the Broad as Senior Party and CVC as Junior Party, without giving either party benefit of its earlier filings at this stage. It is important to note that CVC’s applications were first filed with the USPTO in May of 2012, while the Broad filed its first application almost seven months later in December of 2012. This designation is different from the PTAB’s designation in the ‘048 Interference due to the fact that the 10 CVC Group patent applications were filed in 2018 and claim priority to CVC’s original May 2012 filing, while Broad’s involved patents and patent application were filed between 2013 and 2015. Because neither party was given benefit of its first filing dates, but instead given benefit only to the actual filing dates of the involved patents and patent applications, CVC was by default named the Junior Party. Both parties will have the opportunity to request benefit of their earliest priority dates (CVC filed first on May 12, 2012, and the Broad filed on December 12, 2012).

The interference process generally takes approximately two years to complete from its declaration through a final decision by the PTAB and has two phases. During the first phase, also known as the motions phase, the PTAB considers motions filed by the parties seeking to, among other things, terminate the interference, add or exclude certain patent claims, redefine the interference count, and seek a different seniority designation. In the second phase, known as the priority phase, the PTAB determines the ultimate issue as to which research team first invented and, therefore, is entitled to the patents covering the use of CRISPR/Cas9 to genome edit eukaryotic cells. That is, at the conclusion of the interference, the PTAB will determine whether CVC was the first to invent, in which case the 10 patent applications covering the genome editing using CRISPR/Cas9 in eukaryotic cells will issued as patents and the Broad patents will be invalid. If the PTAB determines that the Broad was the first to invent, its patents will survive and the CVC patent applications will not issue as patents.

Download the PTAB Declaration of Interference

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