Some thoughts on the upcoming CRISPR patent interference
If products or treatments are delayed, the high-profile legal fight could end up reflecting badly on the universities, who all used public tax dollars or philanthropic gifts to make the inventions.
AND an allusion to earlier patent interferences:
Interferences have helped to decide control over some of the most lucrative inventions ever, including the telephone, the sewing machine, and television. In 1885, a competitor managed to strip Thomas Edison of a patent on a lightbulb with a paper filament, although by that time Edison had invented a better one.
** One relevant interference that was not mentioned by the MIT Tech Rev, which did involve inventions BOTH of which were funded by the federal government was Noelle v. Lederman, 355 F.3d 1343 (CAFC 2004). The CAFC decision was covered by IPBiz [More on Noelle v. Lederman; antibodies</>
AND see also http://jolt.law.harvard.edu/digest/patent/written-description-problems-of-the-monoclonal-antibody-patents-after-centocor-v-abbott]
The Noelle v. Lederman case involved 112 issues, just as the CRISPR case is likely to involve 112 issues. Noelle (the junior party) lost because Noelle did not sufficiently describe the human CD40CR antigen at the time of the filing of the earlier '799 patent application.
The CRISPR case will turn on "which party" sufficiently described and enabled the invention of the counts first.
Purely hypothetically, one notes that if the paper co-authored by Doudna,
A programmable dual-RNA-guided DNA endonuclease in adaptive bacterial immunity.
which was publicly available June 28, 2012 does describe a count, and the earlier priority cases claimed by Zhang [with dates Dec. 12, 2012, Jan. 2, 2013, Mar. 15, 2013 and Jun. 17, 2013, ] do not, then there could be a 102(b) issue, because June 28, 2012 is more than one year before the filing of provisional patent application 61/842,322, entitled CRISPR-CAS SYSTEMS AND METHODS FOR ALTERING EXPRESSION OF GENE PRODUCTS filed on Jul. 2, 2013.
** Also from the MIT Tech Rev:
If the patent office approves it, the request for a “patent interference,” as the process is known, sets up a winner-takes-all challenge in which either the Broad Institute, or the University of California and two co-petitioners, including the University of Vienna, will come away with all the rights to the gene-editing system, leaving their rival with nothing.
As one point, the Sawyer and Man v. Edison interference was anything but "winner take all" matter.
After the interference concluded, each side sued the other over the residual rights. The broad version of the Sawyer / Man patent claims was found invalid in 1895 [ 159 U.S. 465 (1895) ], after Westinghouse light bulbs were used at the Columbian Exhibition in Chicago in 1893.
As a second point, in the Noyce v. Kilby matter, Kilby, the senior party, won the interference at the Patent Office but Noyce prevailed on appeal. By the time the appeal decision appeared, the companies had already worked out an agreement, rendering the economic impact of the CCPA decision nugatory.
See the IPBiz post Noyce v. Kilby including the text:
The CCPA disposed of Kilby's argument that the examiner and board found no difficulty with the concept of "laid down."
As to Kilby's statement that neither the examiner nor the board had "any difficulty with the language in question," we do not regard the concurrence of the examiner and board to have any substantial significance in the present circumstances. The record shows merely that the examiner held that there was support in the portions of the '602 application considered here and not that he gave any reasons for his views. The analysis by which the board reached its conclusion is considered to be clearly in error for the reasons already pointed out.