Nexus: right to priority

Aftermath of the CRISPR hearing - Highlights from the blogosphere

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For the past couple of weeks, the patent news has been saturated with reports and commentaries on the Board of Appeal decision in the CRISPR hearing (T 844/18). Many readers may not have the time and/or enthusiasm to read all of these articles. However, what this Kat lacks in time she makes up for in enthusiasm, and provides your post-hearing highlights:

First, a case refresh...

The Broad Institute lost one of their fundamental CRISPR patents (EP2771468) in opposition because of a clear-cut case of invalid priority (IPKat: here). Article 87 EPC, based on Article 4(1) of the Paris Convention, specifies that any person who has filed a patent in a state party to the Paris Convention, or his successor in title, may claim priority from that application for the purposes of a subsequent EP application. The EPO interprets “any person” as meaning that all the applicants (or their successors in title) named on the priority application must be named on the subsequent EP application. The Broad Institute lost their CRISPR patent at opposition because an inventor of the US provisional application from which priority was claimed (or his successor in title) was not named on the PCT application.

News review

On appeal (T 844/18) the Broad Institute argued that the EPO's approach to priority was incorrect. The patentee’s arguments may be summarised as follows: (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 applicant” in Article 87 EPC when the priority application is a US provisional.

After hearing lengthy submissions on each of these arguments from the patentee and opponents, the Board of Appeal dismissed the Broad Institute's appeal. The Board of Appeal thus upheld the opposition decision that the priority claim was invalid, and that consequently the patent lacked novelty.

The patentee

Understandably, those on the winning side of the appeal have been most vocal with their opinions on the outcome. Conversely, law firms supporting the Broad Institute (including De Clerq, Bird & Bird and Brinkhof) have not provided any commentary. However, the Broad Institute itself issued a statementon the day of the decision. The Broad Institute echoed its previous statements that their patent had been dismissed by the Board of Appeal due to a “technical formality”. They were also eager to point out that “the majority of Broad’s CRISPR-Cas9 patents in Europe are not affected by this decision”. Licences for CRISPR technology in Europe are therefore likely to be largely unaffected by the Board of Appeal decision.

The Broad Institute further did not waste an opportunity to take a dig at University of California Berkeley (UCB), their main rival in the CRISPR patent dispute. The Broad mentioned that they have “for seven years…made many attempts to engage University of California-Berkeley, directly and through their exclusive licensee and through patent pools. These efforts began before UCB licensed its IP exclusively and entirely to commercial entities”. Whilst the revocation of the Broad Institute patent EP2771468 is not a knock out blow, it will undoubtedly strengthen the side of UCB in any future negotiations.

The opponents

The representative for Opponent 1, George Schlich, has published an in-depth review of the outcome of the hearing. From the point of view of many commentators, the simple take-home message from the hearing was that existing case law was followed. Schlich argues that the written decision of the Board will provide something more fundamental: “we will now get a more enunciated reasoning as to why the law and practice is correct and settled”.

Schlich notes that the argument from the Broad Institute that received the most attention was the that "any person" in Article 87(1) EPC and Article 4(1) of the Paris Convention should be interpreted as "any one of" the applicants of the priority application. The Broad Institute had submitted a declaration from no-less eminent a person than Lord Neuberger to support their interpretation of "any". According to Schlich, at the hearing the Broad Institute also referred to recent EPO law indicating that right to claim priority cannot be exhausted (T15/01). However, the Board of Appeal agreed with the Opponents that the right of priority is a single, indivisible right. Thus, the Board of Appeal concluded that the right cannot be divided or separated into multiple priority rights. Schlich makes the very pertinent point that the position of the EPO on this issue may henceforth be supported by the written rationale of Board of Appeal 3.3.08 (once we have the written decision), as opposed to a mere reliance on the argument that this just how it has always been done at the EPO.

The patent press

The appeal hearing attracted considerable coverage from parties not directly involved in proceedings. Those unlucky enough not to be able to attend in person were able to follow the semi-live tweets from observers. However, followers of the live reports will have been reminded of the old adage “it is not over until its over”, as reports that the Board of Appeal had referred questions on priority to the EBA, later proved incorrect [Merpel was particularly amused by the backtracking of certain patent news-outlets with regards to the "EBA referral" incident. Those reporting that the Board of Appeal had decided to refer, were subsequently forced to report a "dramatic reversal" that the Board no longer intended to refer].

Kilburn & Strode LLP (K&S) were very active commentators. In their report of the proceedings, K&S argued that the decision of the Board of Appeal may not, in fact, be the end of the matter. During the hearing, the Broad Institute had objected that there had not been adequate discussion on the decision of the Board of Appeal not to refer the questions on priority to the EBA. K&S propose that the Broad Institute may file a petition for review, on the grounds that there has been a fundamental violation of the Patentees’ right to be heard. The Enlarged Board of Appeal rarely find Petitions of Review admissible. Even when admitted, the majority of Petitions are usually rejected.

JUVE patent summarises all of the parties involved in the European dispute. These included the experts called on to give their opinion of the case. In support of the Broad Institute, “Former UK Supreme Court judges David Neuberger and Leonard Hoffman, Matrix Chambers barrister Phillipe Sands, Joseph Straus, former chair of a EPO Board of Appeal Ursula Kinkeldey, and Swiss Federal Patent Court judge Tobias Bremi”, whilst on the side of the opponents “former German Supreme Court judge Klaus-Jürgen Melullis, former director of the United States Patent and Trademark Office David Kappos, and Rudolf Teschemacher, former chair of a Board of Appeal”.

Another welcome addition to the commentary is provided by Novagraaf, who take the opportunity to remind readers of the pitfalls that exist for US applicants of a European patent application. The US has less stringent priority requirements than the EPO. This is because the US understands priority as applying to inventions. Thus, a priority claim is valid in the US if the priority application and the application claiming priority has merely one inventor in common. Therefore, when a US provisional application is filed in the name of an inventor, in the US the inventor does not need to assign their rights to the applicant of the PCT application prior to the PCT filing date.

The Broad Institute is not alone in falling foul of the trap opened up by the differences in the US and European requirements for a valid priority claim. However, whilst not uncommon, the Broad Institute's error is remarkable for the magnitude of its commercial implications. In view of this, the decision of the Board of Appeal not to refer the issue of priority to the Enlarged Board of Appeal has been welcomed by many practitioners as a triumph of the rule of law over commercial interest and influence.

The EPO

The minutes of oral proceedings have now been published. The minutes are a summary, as opposed to a transcript of proceedings. The minutes confirm that at the start of Day 3, the Board stated that they were then of the view that certain question of law concerning priority should be referred to the EBA (IPKat: here). The minutes do not detail what changed the Board of Appeal's mind on the matter of the referral. The minutes merely mention that the referral was discussed with the parties. Unsubstantiated rumour has it that members of the EBA were seen lurking in the corridors of the EPO, perhaps keeping an eye on developments? The Board of Appeal came to their decision to dismiss the appeal on the fourth day (of the 5 days scheduled), following 2 hours 40 minutes of deliberation over lunch: (IPKat: here).

We now await the written decision of the Board of Appeal, which will provide their reasoning in full.

Further reading:

The opposition decision: EPO revokes CRISPR patent – a clear cut case of invalid priority?
The mysterious declaration: The Broad's CRISPR patent: The curious case of the missing declaration
The statement of grounds of appeal: "Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal
The Board of Appeal's preliminary opinion: BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18)
Hearing, Day 1: The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage
Hearing, Day 2-3: CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA?
Hearing, Day 4: CRISPR hearing Day 4: Still a clear cut case of invalid priority, Broad Institute's appeal dismissed

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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

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

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Today was Day 1 of the Board of Appeal hearing on the validity of one of the Broad Institute’s patents relating to fundamental aspects of CRISPR technology. The simple question at the heart of the dispute between the Broad Institute and the opponents was summarised with admirable succinctness by the Board of Appeal in their preliminary opinion:

“A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is this 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 the answer is ‘no’”.

IPKat heard from one Katfriend that a crowd of interested parties turned up bright and early for the start of the hearing at 9am. However, it seems that the Hearing did not actually begin until after lunch, with proceedings commencing at 1pm. As expected, the afternoon was devoted to clarifying the requests of the various parties in attendance, before moving on to the arguments concerning linguistic analysis of "any applicant" according to Article 87 EPC.

Background: The CRISPR patent wars – simplified version

CRISPR-cas9 gene editing technology (“CRISPR”) provides a cheap, efficient and easy way to precisely modify genetic information. In the US, CRISPR technology is the subject of potentially the last great patent dispute of the first-to-invent era. The main players are the University of California Berkeley (UCB) and the Board Institute. The dispute in the US primarily relates to whether the Broad Institute’s invention of CRISPR in eukaryotic (e.g. human cells) was obvious in view of UCB’s invention of CRISPR in bacteria. The latest development in the US CRISPR patent dispute are covered over on IPwatchdog.

On the other side of the Atlantic, the legal facts of the European CRISPR dispute are very different. The Broad Institute lost one of their fundamental CRISPR patents (EP2771468) in opposition because of a clear-cut case of invalid priority (IPKat: EPO revokes CRISPR patent – a clear cut case of invalid priority?). Article 87 EPC, based on Article 4(1) of the Paris Convention, specifies that any person who has filed a patent in Paris Convention, or his successor in title, may claim priority from that application for the purposes of a subsequent EP application. The EPO, unlike the USPTO, interprets “any person” as meaning that all the applicants (or their successors in title) named on the priority application must be named on the subsequent EP application. In the US, a priority application and subsequent application need only have one inventor in common (MPEP § 213.02).

IPKat desk of appeal hearing news

The Broad Institute lost their CRISPR patent at opposition because of a missing assignment from one of the inventors (Luciano Marraffini) listed on one of the US provisional priority applications. There has been considerable intrigue as to how such a catastrophic (although admittedly not uncommon) mistake was made. These intrigues have been accompanied by occasional bizarre interventions, including third party observations by a noted Australian soap opera character and the curious case of the missing declaration.

By way of colourful background, whilst opposition proceedings where ongoing, the Broad Institute and the Rockefeller University were locked in a patent dispute over whether the missing inventor, Luciano Marraffini, should be included as an inventor on the Broad’s CRISPR patent. The dispute was settled just before the opposition hearing and a press release to this effect was submitted dramatically during opposition oral proceedings. However, the press release was rejected by the OD for being late filed (and arguably wouldn’t have been much use anyway, given that the “same applicant” test would still not have been satisfied). The patent was therefore revoked for lacking novelty in view of prior art published after the provisional application but before the PCT filing.

The Broad Institute’s arguments on appeal

Despite fighting what many would see as a losing battle against a wall of EPO case law, the Broad Institute did not accept defeat with the opposition division decision and swiftly filed an appeal (T0844/18). The Broad Institute’s Statement of Grounds of Appeal (and the Opponents' responses) are well worth a read: "Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal. However, the patentee’s lengthy arguments may be boiled down to 3 main points: (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 applicant” in Article 87 EPC when the priority application is a US provisional.

The Broad Institute argued that entitlement to priority should not be assessed by the EPO because the EPO was never meant to deal with property entitlement issues. Additionally, in perhaps one of their more audacious arguments, the Broad Institute argued that the EPO’s “same applicant” approach was in fact in contravention of a patentee’s human right to property. It was argued that a patentee’s human rights were contravened when a technicality such as an invalid transfer of a property right (the right to claim priority) destroyed the very property (the patent) itself.

The Broad Institute also argued that the opposition division incorrectly interpreted “any person” in Article 87 EPC (and Article 4(1) of the Paris Convention). “Any person”, according to the normal dictionary definition means “one, some or all indiscriminately”. Such a definition, the Broad Institute argued, does not require everyone of the applicants of the priority application to be named on the application claiming priority. The Broad Institute argument was supported by a declaration from no less eminent person than Lord Neuberger himself. However, the Board noted in its preliminary opinion 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”.

In the third thread of their argument, the Broad Institute argued that “any person” and priority entitlements were not something that should be determined according to EPO law, but according to national law - in this case, US law. In their preliminary opinion, however, the Board of Appeal posited that the EPC provides a complete system for determining whether a priority right has been correctly claimed, and that issues may be resolved by the EPO without reference to national law.

A Katfriend at the hearing today reports that, after clarifying the parties submissions, proceedings began in earnest with a discussion of the meaning of "any person" from a linguistic perspective. Further discussion on this issue is expected tomorrow.

Keeping an eye on the tweeters

The stage is therefore set for one of the most exciting Board of Appeal hearings of recent times. If the Opposition Division hearing is anything to go by, we can expect an interesting series of days to come. As a mark of the interest in the case, today's hearing included complaints of tweeting amongst the audience, something it seems the Board is keen to prevent.

It is widely expected that the Board of Appeal will dismiss the appeal in view of the mountain of Board of Appeal case law in support of the current EPO approach. None-the-less, the Broad Institute have thrown a considerable amount into this fight, despite what many see as the limited chance of success. Will the EPO be swayed?

Stay tuned to IPKat as the hearings continue.

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

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

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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]

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Nexus

Aftermath of the CRISPR hearing - Highlights from the blogosphere

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?

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

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

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