US Appeals Court Overturns USPTO's Decision on CRISPR Patents

US Appeals Court Overturns USPTO's Decision on CRISPR Patents

The US Court of Appeals for the Federal Circuit has overturned a Patent Trial and Appeal Board (PTAB) ruling that previously invalidated five patents related to the groundbreaking gene editing technology CRISPR.

In the precedential opinion, SNIPR Technologies v Rockefeller University, issued on July 14, the US Court of Appeals for the Federal Circuit determined that the patents owned by biotech company SNIPR Biome were protected under the "interference-free" provisions of the America Invents Act (AIA).

In 2011, the AIA was implemented, transforming the US patent system from a "first-to-invent" approach to a "first-to-file" system for determining patent priority.

With the introduction of the new act, the concept of "interferences" – which were administrative priority contests under the previous patent regime – was eliminated.

In 2021, the PTAB had declared an interference between SNIPR's five patents and a first-to-invent patent application from Rockefeller University. This interference resulted in the cancellation of all claims of SNIPR's patents.

SNIPR appealed, arguing that the PTAB should not have subjected its first inventor-to-file patents to an invention date contest against Rockefeller's first-to-invent application through interference, as it was a vestige of the old patent system.

The opinion highlights that the AIA explicitly states that interferences and other first-to-invent aspects of the pre-AIA law do not apply to patents exclusively governed by the AIA and are issued under the new first-inventor-to-file regime.

The precedential opinion has reinstated SNIPR's patents, citing that "pure" AIA patents should not be involved in interferences. Consequently, the director made an error by declaring an interference involving the SNIPR patents.

The opinion ultimately found Rockefeller's and the PTAB's remaining arguments to be "unpersuasive."

SNIPR was represented by Morrison Foerster, with the appellate team led by attorneys Brian Matsui and Seth Lloyd. Additionally, the legal representation included patent prosecution partner Janet Xiao, patent litigation of counsel Parisa Jorjani, and patent litigation senior counsel Matthew Kreeger.

According to the team representing SNIPR, the Court's ruling emphasised that the AIA replaced the statutory provisions that allowed for interference proceedings under the previous Patent Act. Furthermore, the AIA eliminated the requirement of invention priority, which was the central issue in interference, as a condition for patentability.

Christian Grøndahl, the co-founder and CEO of SNIPR Biome, expressed his thoughts on the recent court ruling, stating that SNIPR was the first company to obtain a patent for the application of CRISPR to target and modify bacterial genomes." He further highlighted that the company now possesses a substantial intellectual property portfolio, consisting of over 60 granted patents worldwide.

“The applications of CRISPR are continuing to expand, and we are applying our knowledge of CRISPR to develop innovative therapeutics that leverage our pioneering efforts in microbial gene editing, in order to address serious and difficult-to-treat diseases,” Grøndahl stated.