Nexus: 3.3.08

CRISPR hearing Day 4: Still a clear cut case of invalid priority, Broad Institute's appeal dismissed

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CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA?

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Twitter was awash today with news that the Board of Appeal in the CRISPR appeal case had referred questions on priority to the Enlarged Board of Appeal (EBA). However, these reports proved premature. None-the-less, there seems no doubt that the Board of Appeal are leaning towards a referral. The European patent community is advised to adopt the brace position.

Today is the third day of the proceedings in the CRISPR appeal case (See IPKat's report on Day 1 for full background to the case: the Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage).

Image source: a Katfriend

In brief summary, the Broad Institute's CRISPR patent was revoked by the opposition division for lacking a valid priority claim under the well-established EPO approach to priority, based on mountains of Boards of Appeal case law. The Patentee's argument on appeal is that the EPO approach to priority is wrong because it is not in line with the Paris Convention or a proper interpretation of Article 87 EPC. There are three threads to the Patentee's argument: (I) Entitlement to priority should not be assessed by the EPO, (II) the EPO incorrectly interprets the phrase “any person” in Article 87 EPC and Article 4 Paris Convention, and (III) US law should govern the interpretation of “any person” in Article 87 EPC when the priority application is a US provisional.

In a dramatic development this morning, it seems that the Board of Appeal (3.3.08) were poised to seek clarification from the EBA on each of the three strands of the patentee's argument. The Board of Appeal indicated that the referral would be justified on the grounds that the points of law in question were of fundamental importance (Article 112 EPC). Thus, the Board of Appeal announced that it was their intention to refer questions on the issue of priority to the EBA. A break ensued to allow parties to consider their response. IP Magazine's twitter account reported that a referral had in fact been made. These reports turned out to be false [Merpel: Fake News!].

After the break, strong objections against a referral were raised by the Opponents. The Opponents argued that the questions should only be referred if the Board of Appeal believed the current EPO approach was incorrect. Particular, the referral could not even be contemplated unless the Board of Appeal intended to decide the case contrary to the established EPO case law on priority. As the Opponent's have pointed out, even a one off contradictory decision by a Board of Appeal does not necessarily justify a referral.

Following a heated debate, the Opponents succeeded in preventing a referral to the EBA today. The Board agreed that all three strands of the Patentee's arguments on priority should be discussed before a decision could be made on a referral. After lunch, discussion therefore moved on to the arguments concerning whether the EPO was competent to decide on the issue of entitlement to priority. The Board has also yet to consider the final strand of the argument, i.e. whether US law should govern priority entitlement in this case.

We are therefore holding our breath to see whether the Board will persist with their view that a referral to the EBA is necessary.

Can a referral to the EBA be justified?

The Board of Appeal has indicated that they would contemplate a referral on the ground that the issues at stake are of fundamental importance. The criteria for what constitutes an "issue of fundamental importance" was supplied by the EBA in G 1/12: "a point of law is...to be regarded as of fundamental importance if its impact extends beyond the case in hand. Such importance is established if it could be relevant to a large number of similar cases". As Opponent 1 pointed out, the "large number" of cases to which the issue could be said to be relevant in this case, are all cases of the Patentee that claim priority from the same US provisional...

If there were to be a referral from the Board of Appeal, this would arguably not seem to be keeping with the norms of EPO legal practice. It is hard to argue that there is not uniform application of the law of priority across the Boards. It is also difficult to see how their can be said to be an issue of fundamental importance (except to the Patentee). To refer the issue to the EBA would be extraordinary. In this Kat's view, if the technology to which the patent relates wasn't so valuable, and if the case wasn't so high profile, it seems highly unlikely that a Board of Appeal would even contemplate a referral.

Stay tuned to IPKat for Day 4 as the hearing continues.

Day 1: The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage

Nexus

CRISPR hearing Day 4: Still a clear cut case of invalid priority, Broad Institute's appeal dismissed

CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA?

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