EP2771468 - Decision of OD in Crispr case (first instance)
You can't slice up a priority right |
Today we have the first instance decision in the opposition against European patent 2771468 having the title "ENGINEERING OF SYSTEMS, METHODS AND OPTIMIZED GUIDE COMPOSITIONS FOR SEQUENCE MANIPULATION" (PCT/US13/74819). The grounds for the decision were published 26 March 2018.
We usually only have board of appeal decisions, but I'm told this is an important case as it relates to the CRISPR technique of DNA manipulation. It is moreover interesting because of its scale and the issues it raises. There were 9 opponents, 255 documents filed, 72 auxiliary request and a 40-page decision.
The priority documents are US provisionals and each have a number of natural persons as inventors/applicants. I count a total of 12 different natural persons who are applicants to the priority documents in various combinations. It turns out that for some of these persons the priority rights had not been transferred to an applicant of the PCT application, or at least evidence of a transfer acceptable to the OD was not filed. As a result, the priority claim was objected to the by the opponents. The proprietors have numerous arguments why this objection should not be allowed, but in the end the priority claim is not accepted. Because of the invalid priority, the patent was found not novel.
The underlying problem appears to be hidden in reasons 75-75.1: one of the inventor/applicants of the provisional was not an inventor in the sense of the US law. Accordingly, his successor in title was left of the PCT application, probably to satisfy US law. That one of the persons, who is not an inventor, misses as an applicant on the PCT application now appears to doom this patent in Europe.
Notice of appeal has already been filed, so we'll be interested to see how this case progresses.