The CRISPR ‘cut and paste’ gene editing technology is controversial yet looks to have real potential for breakthroughs in treatment of disease as well as fields as diverse as agriculture and materials engineering.

In January 2020 the European Patent Office reported an important decision (T844/18) of the EPO Board of Appeal, which confirmed a previous decision of the EPO opposition division, in which a patent (EP 2 771 468 B1) for CRISPR gene editing technology (i.e. clustered regularly interspaced short palindromic repeat, which is a family of DNA sequences found in the genomes of prokaryotic organisms such as bacteria and archaea), considered to be worth millions of Euros was revoked.

In this case, 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 the subsequent European patent was derived.

Since the omitted applicant had not transferred his rights to the applicants of the PCT application, the priority claim was considered invalid. Due to the invalid priority claim, a prior art published in the term between the priority date and the PCT filing date rendered the subject-matter not novel.

The detailed reasons for the board’s decision are not available yet and will be issued in the near future.

It is important to note that in case where it is intended that the number of applicants of a second application is smaller than the number of applicants of a first application which priority is claimed, there are two options:

1. The omitted applicant(s) has/have to transfer his/their right(s) to priority to the remaining applicant(s) before filing of the second application;

2. The second application is filed by (at least) the same applicants of the first application and the applicant(s) to be omitted transfer(s) the right(s) to the patent application to the remaining applicant(s) after filing of the second application.

In the first case, it is not necessary to file the transfer to the priority right with the EPO, but we do highly recommend to do so, since it might be very difficult or even not possible to provide proper documents proving the transfer of the priority right many years later when the patent’s priority claim is challenged.

Please note: This issue does not arise in case where the number of applicants of the second application is greater than the number of applicants of the first application and all applicants of the first application are comprised in the applicants of the second application.

FICPI’s view and involvement 

FICPI is very alert on this and other related priority issues, closely observes them and, in many cases, develops Resolutions to proceed with advancements driven by FICPI members. For instance FICPI’s Study & Work Committee (CET) is deeply involved on said topic and is always encouraging members to contribute in this area. 

Membership of FICPI brings insights from the wider perspective of the worldwide independent IP attorney members and members of FICPI committees. These are communicated through news updates, seminars, events, direct links with members through the member directory and personal relationships cemented over time. Events such as FICPI’s October 2020 Open Forum in Cannes offer opportunities to learn through multiple interest streams and to continue to develop legal and professional excellence. Readers who are interested in technology developments and other topics are encouraged to join one of the CET groups or Commissions (https://ficpi.org/organisation/ficpi-commissions) and/or enlist for the upcoming Open Forum.

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