The Broad Institute of MIT and Harvard said today they have joined discussions to create a nonexclusive CRISPR/Cas9 joint licensing pool being coordinated by MPEG LA, which operates patent pool licensing programs across institutions and countries.
The patent pool would facilitate the licensing of patents covering CRISPR—which stands for clustered regularly interspaced short palindromic repeats—by creating a “one-stop shop” for commercial users without forcing licensees to pursue agreements with several entities, the Broad said.
The Broad disclosed today that it responded June 28, two days before the deadline set in April by MPEG LA, a provider of one-stop licenses for standards and other technology platforms. MPEG LA requested submissions by CRISPR/Cas9 patent holders to join in creating a global joint licensing platform related to the technology.
The Broad submitted for evaluation 22 patents—13 U.S. patents and 10 European patents—contained within 10 patent families. That submission, the Broad said, was also being made on behalf of joint patent owners Harvard University, the Massachusetts Institute of Technology, and The Rockefeller University.
“We strongly support making CRISPR technology broadly available,” Issi Rozen, CBO of the Broad Institute, said in a statement. “We look forward to working with others to ensure the widest possible access to all key CRISPR intellectual property.”
The Broad says it joins with MIT, Harvard, and Rockefeller to make CRISPR tools freely available to the academic and nonprofit communities and issue nonexclusive licenses for most types of commercial research, including agriculture. The exception is human therapeutics, where the Broad limits exclusivity through its Inclusive Innovation model, which offers one licensee exclusive use for a defined two-year period, followed by an open call for applications by other groups. The two-year exclusive period has already ended for CRISPR applications.
According to the Institute, the patents it submitted for discussion include not only those related to CRISPR/Cas9, but “more broadly relevant” CRISPR patents and application related to the technology.
Zhang Patents Included in Submission
The 22 patents include the 12 patents related to CRISPR technology that list as inventor Feng Zhang, Ph.D., of the Broad Institute—patents at the center of a bitter legal dispute with University of California (UC), Berkeley, over who invented CRISPR gene-editing technology.
In April, the grantees of a European patent for the gene-editing technology—the Regents of the University of California (UC), the University of Vienna, and Emmanuelle Charpentier, Ph.D., a director at the Max-Planck Institute in Berlin—appealed to the U.S. Court of Appeals for the Federal Circuit to overturn a February 15 decision by the Patent Trial and Appeal Board (PTAB). A three-judge panel of the PTAB sided with the Broad Institute of MIT and Harvard by finding “no interference in fact” between the 12 CRISPR/Zhang patents and a patent application by Dr. Charpentier and Jennifer Doudna, Ph.D., of UC Berkeley.
The Doudna/Charpentier application states claims covering the use of CRISPR in a bacterial system, while the Broad's patents focus on the use of CRISPR in eukaryotic systems, such as plants and higher animals. UC Berkeley, Dr. Doudna, and Dr. Charpentier challenged the Broad patents, contending that the application of CRISPR to eukaryotic systems represented an obvious rather than an inventive invention and was thus nonpatentable. The Broad has defended its CRISPR patents.
According to the Broad, the U.S. Patent and Trademark Office has issued more than 60 patents with claims to CRISPR and/or Cas9 to approximately 100 inventors from 18 applicant organizations, including to some academic institutions that have only issued exclusive licenses. The European Patent Office (EPO) has issued more than 20 such patents to approximately 30 inventors from about 10 applicant institutions.
Last month, MilliporeSigma, the life science business of Merck KGaA, won its first Australian patent for CRISPR technology, relating to the use of CRISPR in a genomic integration method for eukaryotic cells.