BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18)

An interesting update in the progress of the CRISPR/Broad Institute appeal (T0844/18) has reached this Kat’s fluffy ears. As previously reported on IPKat, oral proceedings are scheduled for 13-17 January 2020. The Board of Appeal (BA), 3.3.08, has now issued a communication summarising the issues that will be discussed in the hearing. It seems that the 4.5 day hearing will be almost entirely devoted to consideration of whether the EPO’s long-standing approach to priority, particularly the “same applicant test”, should be altered. Many thanks to an anonymous Katfriend for sending the communication to IPKat.

Background 

T0844/18 is an appeal from the opposition division (OD) decision to revoke the Broad’s Institute’s CRISPR/Cas-9 patent, on the grounds of lack of novelty in view of an invalid priority claim (IPKat post here). The OD decision was in line with the large body of EPO case law on priority. The case law provides that the right to claim priority from an earlier application according to Article 87 EPC is afforded to the applicant of the earlier application and to no other party (i.e the applicant(s) must be the same). The Broad's CRISPR European patent (EP2771468) was based on a PCT filing (WO 2014204729) claiming priority from a number of US provisional applications. One of the US provisionals named an inventor-applicant who was not named on the PCT application. The EP patent was thus revoked in view of an invalid priority claim.

The importance of the case (and the significant commercial importance of CRISPR), is reflected by the Broad Institute’s ninety-four page grounds of appeal, with supporting declarations from such eminent persons as Lord Neuberger and Lord Hoffman (IPKat post here). Equally long responses have been submitted by the numerous opponents.

Preliminary thoughts from the Board of Appeal

From the Communication, it is clear that majority of the 4.5 day hearing will be taken up with discussion of the substantive issue of the validity of the Broad’s priority claim.  The issue in question is succinctly summarised by the BA:

"A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is the priority claim valid even without any assignment of priority right from B to A

The appellants say that the answer is ‘yes’ and the respondents that it is ‘no’". 

The BA then provides a preliminary view of some of the points of contention among the parties.

The BA first notes that current case law favours the opponents of the patent. Regarding the linguistic arguments relating the meaning of “any person” in Article 87 EPC, the BA “is of the view that the term ‘any person’ is ambiguous, rending attempts to elucidate the meaning of these provisions upon a purely linguistic basis difficult and most unlikely to succeed”.

A packed room is expected at oral proceedings

On the relevance of national law (as argued for by the Broad), the BA notes that the EPC provides a complete system for determining whether a priority right has been correctly claimed, and that the issue may be resolved by the EPO without reference to national law. The BA also notes that it cannot find any merits in the references by the parties to national law as regards some aspects of real property. Perhaps unsurprisingly, the BA’s initial thoughts therefore do not appear to be favourable to the Broad.

The BA concludes that the outcome of the case will turn upon the pros and cons of altering the EPO’s practice on how the Article 87 EPC is interpreted. As neatly summarised by the BA, according to the Opponents, factors possibly speaking for maintaining the current EPO practice are: 

•  “The practice is long standing.
•  It may protect joint applicants against sharp practice by a sub-group of the joint applicants.
• The situation of the patentees in the present case could have been avoided if they had shown sufficient foresight.
• There is a risk of multiple subsequent applications.
• There could be other possible negative consequences of changing this practice.”

The BA also summarises some factors possibly in favour of changing the present practice, as argued for by the Broad Institute: 

•  “The joint applicant for the priority application who is not mentioned in the subsequent application would be in a better position: it would at least have the possibility of asserting its rights in any patent resulting from the priority application; the present practice means that loss of priority may be followed by loss of the patent.
• The appellants’ approach is more in line with the aim of the Paris Convention, that of facilitating international patenting as it relaxes the required formalities whilst safe-guarding those elements necessary for recognising a priority right under Article 87(1) EPC”

The BA concludes that “[i]t will probably be necessary to weigh up, amongst other considerations, the above factors in order to reach a decision”.

A large audience of interested parties is expected in Munich in early January. The hearing will be held in room 128 of the Isar Building.

Stay tuned to IPKat for further updates!

[Update: the communication has now been published on the register, here]