Lessons from CRISPR: Getting your European priorities straight

EPO ruling on CRISPR gene-editing patent is only the latest example of priority arrangements made according to US practice causing problems for European Patent applications, as Dr Oliver Harris explains. 

During oral proceedings at the European Patent Office (EPO) last week (16 January 2020), the Board of Appeal dismissed the appeal (T0844/18) lodged by the proprietors of CRISPR patent EP2771468, upholding the decision of the Opposition Division (OD) to revoke the patent for lack of novelty. 

While the formal written decision and minutes of the oral proceedings are pending, we do know that the crucial lack of novelty finding was made after the Board agreed with the OD that a number of the patent’s priority claims were invalid. 

This was a major blow to the proprietors, The Broad Institute, MIT and Harvard College, given the seminal nature of EP2771468 in their CRISPR portfolio in Europe. (For non-biotech readers, CRISPR is a gene-editing technique that is arguably the most significant biotech development of the 21st century.) However, the outcome is in line with established EPO case law, and provides a salient reminder of the need to consider the differences between EP and US practice, particularly regarding priority. 

All applicants must be named for a valid priority

In a somewhat dramatic twist, the Board of Appeal indicated during the oral proceedings that it might refer the matter of priority to the EPO’s Enlarged Board of Appeal, only to decide a day later that it could deal with that matter without such a referral. Ultimately, the Board re-affirmed the EPO’s ‘all applicants’ approach to valid priority entitlement, whereby all applicants of a priority filing, or their successors in title, must be named as applicants on a later case, for that later case to validly claim priority to the priority filing.  

For EP2771468 (derived from a PCT application), the priority claims to its first two priority filings, ‘P1’ and ‘P2’ (amongst others), were held to be invalid, meaning that two pertinent documents became prior art, fatally so. P1 and P2 were both US provisional applications and both filed in the name of eight inventors but for one of these (Mr Maraffini), neither the inventor nor his successor in title (Rockefeller University) was named as an applicant when the PCT application was filed. 

Guidance for applicants

Establishing valid priority claims is crucial to success for patent applications, and some of the more common pitfalls in Europe, particularly for US applicants, are as follows (where the ‘later case’ is a later-filed application claiming priority to the priority filing):

• failure to name all applicants (or successors in title) of a priority filing on the later case (as per the CRISPR situation above);
• failure to establish a chain of title from an applicant of a priority filing to their successor in title, before the later case is filed in the name of that successor; and
• failure to use a priority filing that is the first filing for the invention in hand (as can sometimes arise for example when the priority filing being used is a US ‘continuation-in-part’ or ‘CIP’).

Given the potential penalties, it is advisable to consult with a qualified European Patent Attorney much earlier, e.g. ahead of filing a ‘later case’ at the EPO, directly or indirectly (e.g. via a PCT application). At Novagraaf, we are on hand to provide advice on this important matter, generally or on a case-specific matter. Please get in touch with one of our European Patent Attorneys for further guidance or support, or contact us below. 

Dr Oliver Harris is a European Patent Attorney and a UK Chartered Patent Attorney at Novagraaf in the UK.