The Board of Appeal of the EPO dismissed the Broad Institute’s appeal against the Opposition Division’s previous decision to revoke one of their patents covering CRISPR gene editing technology (EP2771468) on 16 January 2020. The patent was revoked in first instance opposition proceedings due to an invalid claim to priority arising from lack of entitlement and intervening prior art that removed novelty from the claims. The Broad Institute appealed this decision on three grounds: (i) entitlement to priority should not be assessed by the EPO, (ii) the EPO incorrectly interpreted the phrase “any person” in Article 87 EPC and Article 4 Paris Convention, and (iii) US law should govern the interpretation of “any applicant” in Article 87 EPC when the priority application is a US provisional.
The Broad Institute was facing an uphill battle against a large body of established Board of Appeal case law relating to invalid priority claims so there was surprise, frustration and strong argumentation from the Opponents, when at the start of the third day of proceedings the Board of Appeal suggested that it was considering referring questions relating to the three arms of the Patentee’s case to the Enlarged Board of Appeal. After hearing the arguments of both sides on days three and four, the Board decided against a referral, stating that they were able to come to a decision on lack of entitlement to the priority right, and issued their decision rejecting the appeal. The Board of Appeal’s agreement with the Opposition Division’s earlier decision that the Patentee was not entitled to the priority right was not a surprise given the large volume of case law supporting this decision.
Although this patent has been revoked, this is not the only patent family relating to CRISPR. There are many other patents relating to various aspects of CRISPR technology owned by the Broad Institute and other parties. There are also five divisional applications in the same family as the revoked Patent, currently still pending before the EPO in opposition, appeal or examination, so the disputes may carry on for some time yet.
Terry Instone, Appleyard Lees Senior Associates present as an observer at the oral proceedings said:
“When the Board set out its preliminary view, at the start of day three, that it was minded to submit three questions to the EB, it surprised us all.
However, by end of the day I could understood why the Board might be considering doing this.
The key legal question, which the Board initially believed was a “fundamental legal question” in line with Art 112(a) EPC, so that they were considering referring it to the Enlarged Board, was whether the EPO is competent to assess entitlement to priority right. The other two questions they were considering referring were about how to proceed in the event that the EB said the EPO should be assessing entitlement – how to interpret “any person” in Art 87(1) EPC and which law to use when assessing entitlement.
Part of the reason for this being considered was possibly based on the preliminary opinion of another Board, on Appeal T 239/16, concerning EP1591122, which set out the issues as to why an EB referral on this point of law might be appropriate.
The Patentees’ arguments for referral to the EB in this appeal essentially followed this preliminary opinion in T 239/16. In a nutshell, the question was whether Arts. 60, 68 and 138(1)(e) EPC, which deprive the EPO of the right to settle entitlement disputes in relation to applications/patents, should be seen as also applicable to disputes over entitlement to priority right, as successor in title, in connection with Art. 87 EPC.
However, after a further brief session on day four, the Board had been persuaded that there really was no ned to refer anything to the EB and that they were competent to decide that the Patentee was not entitled to priority.”