EPO and CRISPR: priority problems

A press released published by the Broad Institute of MIT and Harvard on 17 January 2018 indicates that The European Patent Office (EPO) has revoked one of the Broad Institute’s European patents following oral proceedings. The patent, EP 2771468, was related to the much talked-about gene editing technology, Clustered Regularly Interspersed Short Palindromic Repeats (CRISPR). The cause of the problem appears to be related to the US provisional patents from which the European patent claims priority.

When a patent is filed in a country that is a signatory of the Paris Convention or a member of the World Trade Organisation, the applicant (or their successor in title) may, within 12 months, apply for protection in all the other member countries, “claiming priority” from the first application. The main advantage of this is that the later application is treated as if it were filed on the same day as the initial application, for the purpose of determining relevant prior art and for assessing novelty.

According to the Paris Convention, “Any person who has duly filed an application for a patent … in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.”

Meanwhile, according to the European Patent Convention (EPC), the right to claim priority from an earlier application is afforded to the applicant of the earlier application, or the applicant’s successor in title at the time of filing the subsequent application. No other party may claim priority (Article 87 EPC). Where the earlier application has multiple applicants, all of these applicants, or their successor in title, must be jointly named as applicants when filing the subsequent application.

Specifically, Article 87(1) of the EPC states, (1) Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization an application for a patent …, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.

The Paris Convention is not formally binding upon the EPO. However, according to its preamble, the EPC constitutes a special agreement within the meaning of Article 19 of the Paris Convention. So it would be reasonable to expect that the EPO would not act directly against the Paris Convention. The complications appear to arise due to a difference in interpretation.

In the case of this European CRISPR patent, the problem seems to have been the result of a difference in applicants between the European CRISPR patent and the US provisional patents from which it claims priority. The applicants for this European patent are the Broad Institute, MIT and Harvard. Two of the provisional applications that this European patent claims priority from do not have the same applicants listed (US 2012/61736527 and US 2013/61748427 appear to additionally include Rockefeller University as an applicant).

According to EPO case law, for a valid priority claim to be made, if the applicant of the subsequent application claiming priority is not the person who filed the earlier application, they must be the original applicant’s successor in title when the subsequent application is filed. An assignment from the initial applicant to the applicant’s successor after the filing date of the subsequent application would not be sufficient for the priority claim to be valid. For example, this was discussed in T577/11.3 (Tenaris Connections Ltd vs Vallourec Oil and Gas France), which called attention to the wording “has … filed” and “shall enjoy, for the purpose of filing…” and concluded that the “provision therefore relates to a period of time lying between the acts of filing the priority application and filing the subsequent application.”

This is also the case in the UK. This interpretation of the law was clarified in the UK in 2009 in the decision in Edwards Lifesciences vs Cook Biotech, in which Mr Justice Kitchin (as he then was) stated,

“A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application … If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention … Any other interpretation would introduce uncertainty and the risk of unfairness to third parties.”

Kitchin J went on to note that, by this point in time, the Board of Appeal of the EPO had already taken this approach in two cases.

However, in the US this wording is not interpreted as strictly. Here, there must be at least one joint inventor in common between an earlier and a subsequent application and there is apparently no need, at present, for all of the applicants to be named on both applications. Further, if a US provisional application is filed in the name of an inventor, and the inventor assigns this application to someone else after the filing date, there is no requirement in the US that this assignment must take place before the filing of a subsequent PCT application, claiming priority from the provisional application.

Note that this case has nothing to do with the substantive merits of the patent in question. However, unfortunate though it may be, nine notices of opposition were filed during the post-grant opposition period. Oral proceedings followed but the decision has not yet been published. Meanwhile, the Broad Institute has filed a notice of appeal against the EPO’s decision and has published a press release, suggesting that the patent was revoked due to differences in applicants between the priority applications and the subsequent application. The press release in particular indicates that the grounds for the appeal will be inconsistences with treaties designed to harmonise the international patent process.

Author: Rebecca Douglas