Monday, January 20, 2020 Breaking news - Decision in case T 844/18 on the CRISPR gene editing technology

Last week, oral proceedings took place in T 844/18 on the CRISPR gene editing technology and a decision was taken at the end of the oral proceedings. On Friday, the news message below was posted on the EPO website.

Decision in case T 844/18 on the CRISPR gene editing technology

17 January 2020

European patent EP 2771468 relates to the CRISPR gene editing technology. The EPO opposition division had revoked the patent for lack of novelty in view of intermediate prior art. This prior art became relevant because the opposition division did not acknowledge the patentee's claim to priority from a US provisional application naming more applicants than the subsequent PCT application from which EP 2771468 is derived. Since the omitted applicant had not transferred his rights to the applicants of the PCT application the priority claim was considered invalid.

On 16 January 2020, the EPO Board of Appeal in case T 844/18 dismissed the patent proprietor's appeal against the decision of the opposition division and thus confirmed the revocation of the patent. The board did not refer questions to the Enlarged Board of Appeal.

The reasons for the board’s decision will be issued in writing in due course.

This decision T 844/18 has been given in oral proceedings and is not yet available in written form. The file wrapper can be found here. 
Also refer to our earlier blog post of Tuesday, 29 may 2018, "EP2771468 - Decision of OD in Crispr case (first instance)"

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Update 29.01.2020: Minutes of Oral proceedings now available in the register, here.

The minutes provide, among others:

[...]

It was discussed with the parties what issue should be dealt with first in the oral proceedings.
After deliberation the Chairman announced the Board's decision to consider the issue of the ordinary meaning of the phrase "any person" in Article 87 EPC and Article 4A Paris Convention for the Protection of Industrial Property.
[...]
The Chairman closed the debate on the issue of the ordinary meaning of the phrase "any person" in Article 87 EPC and Article 4A Paris Convention, and stated that on 14 January 2020 the issue of the interpretation of the phrase "any person" in Article 87 EPC and Article 4A Paris Convention with regard to its context and in the light of the object and purpose of these conventions would be discussed with the parties.

[...]

The issue of the interpretation of the phrase "any person" in Article 87 EPC and Article 4A Paris Convention with regard to its context and in the light of the object and purpose of these conventions was discussed with the parties.
[,...]
After deliberation, the Chairman announced that the debate on the interpretation of the phrase "any person" in Article 87 EPC and Article 4A Paris Convention with regard to its context and in the light of the object and purpose of these conventions was closed. The Chairman further announced that the oral proceedings would continue on 15 January 2020 with a discussion of whether the EPO was competent to assess entitlement to claim priority rights.

[...]

The Chairman opened the oral proceedings and stated that the next subject for discussion was whether the EPO was permitted to assess entitlement to claim priority rights. The Chairman then stated that the Board was currently of the view that certain questions of law concerning the following topics should be referred to the Enlarged Board of Appeal:
Appeal:

1. Whether entitlement to claim priority rights should be assessed by the EPO.
2. The proper interpretation of "any person" in Article 87(1) EPC.
3. The applicable law for interpreting "any person who has duly filed".

The conditions for a referral and whether in this case questions should be referred to the Enlarged Board of Appeal was discussed with the parties.
[...]
The Chairman declared the debate on the question to what extent the EPO should examine entitlement to claim a priority right closed.
The Chairman announced that the oral proceedings would resume at 09:00 hours on 16 January 2020 to discuss the issue of what was the applicable law for interpreting "any person who has duly filed".

[...]

The issue of whether the phrase "any person who has duly filed" should be interpreted by reference to national law, in this case the law of the United States, was discussed with the parties.
[...]
Upon resumption of the oral proceedings the Chairman announced that the Board was of the opinion that the EPO was competent to assess whether an applicant for a patent application was entitled to claim a priority right. The Chairman also announced that the Board was of the opinion that reference to national law was not required in order to interpret the phrase "any person who has duly filed". The Chairman also announced that the Board was of the opinion that the Opposition Division had been correct in its interpretation of "any person".

The Chairman stated that the consequence of these opinions was that priority rights from PI, P2, P5 and Pll could not be validly claimed in this case.

The Chairman noted that the Appellants had made no submissions regarding the Opposition Division's findings on novelty and thus did not challenge them. Therefore, the Board was able to confirm the correctness of the Opposition Division's conclusions on novelty.

[...]
The Appellants asked for and were granted a 30 minute adjournment.Upon resumption of the oral proceedings the Appellants stated that they had expected a discussion of whether questions were to be referred to the Enlarged Board of Appeal and that they considered that such a discussion was needed. After a brief discussion between the Appellants and the Board on this point the Chairman adjourned the oral proceedings for 10 minutes.

Upon resumption of the oral proceedings the Chairman addressed the point of whether it was necessary to discuss referral of questions to the Enlarged Board of Appeal. He stated that the Board's opinions on the issues before it meant that the Board considered itself able to take decisions on these issues without a referral to the Enlarged Board of Appeal. Indeed, any such referral would most likely be inadmissible given that the Board considered itself able to take a decision.

[...]

The Chairman then declared the debate closed and gave the following decision:

The appeal is dismissed.


The Chairman then closed the oral proceedings.