First salvos in the CRISPR patent interference battle
That argument, in the UC filing, hinges on provisions of the 2011 Leahy–Smith America Invents Act (AIA), a momentous change to U.S. patent law that put in place a “first to file” rather than a “first to invent” system. Once the law went into effect, on 16 March 2013, patent protection was determined by who filed a patent first, not who first made the discovery. But applicants filing after 16 March could still fall under the old rules (and compete with applications filed earlier) by asserting that the invention was made before the date of the changeover. That’s what BI did with its CRISPR patents, filed in 2013 and 2014, but claiming a so-called “priority date” of 12 December 2012.
UC claims that the BI patents don’t fall under the old system, because their filings indicate a mix of pre–16 March and post–16 March inventions. Because the filers checked a box indicating that some claims didn’t have this priority date, they can’t compete with Doudna’s patents in the first place, UC lawyers contend.
The Zhang people may have checked the box, not because it was a mistake, but because it was true. Even if they did not check the box (but some claims were not supported by the 12-12-12 provisional), the support issue would have been analyzed. [If they checked the box erroneously, who knows? For example, see https://blog.oppedahl.com/?p=781]
On the flip side, if there were amendments to some of the Doudna claims, made during the AIA period that assert a later priority date, that would bring all Doudna claims under AIA. [MPEP 2159.02: If a patent application (1) contains or contained at any time a claim to a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013 or (2) claims or ever claimed the benefit of an earlier filing date under 35 U.S.C. 120 , 121, or 365 based upon an earlier application that ever contained such a claim, then AIA 35 U.S.C. 102 and 103 apply to the application, (i.e., the application is an AIA application). If there is ever even a single claim to a claimed invention in the application having an effective filing date on or after March 16, 2013, AIA 35 U.S.C. 102 and 103 apply in determining the patentability of every claimed invention in the application. This is the situation even if the remaining claimed inventions all have an effective filing date before March 16, 2013, and even if the claim to a claimed invention having an effective filing date on or after March 16, 2013, is canceled. ]
The people who asked for the interference were the Doudna people and the USPTO has already found that an interference was proper. If the interference was improvidently granted, there remains the issue of enablement of the Doudna claims.