From left to right: Feng Zhang, Emmanuelle Charpentier and Jennifer Doudna at a Taipei news conference in September 2016 (CNA file photo)
Taipei, Feb. 17 (CNA) The United States Patent Trial and Appeal Board has handed a win to Chinese-American synthetic biologist Feng Zhang (張鋒) and his team from the Massachusetts Institute of Technology (MIT) in a dispute over patents of the gene editing technology known as CRISPR.
In a ruling Wednesday, judges on the Patent Trial and Appeal Board said there was no "interference-in-fact" between the claims by the Broad Institute of MIT and Harvard, and the University of California.
"Broad has persuaded us that the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference," the judges said in the ruling.
Providing sufficient evidence, the Broad Institute showed that its claims -- which are all limited to CRISPR-Cas9 systems in a eukaryotic environment -- are not drawn to the same invention as UC's claims, which are all directed to CRISPR-Cas9 systems not restricted to any environment, the judges said.
The evidence shows that the parties' claims do not interfere, which meant the Broad technique could be patented separately, according to the ruling.
UC Berkeley said it respects the "no-interference-in-fact" decision, but added that it still believes the use of the CRISPR-Cas9 system in eukaryotic cells is not separately patentable from the general application of the system in any cell type, "as invented and claimed by the Doudna/Charpentier group."
As such, the university said, it will be carefully considering all possible legal options at this juncture.
In May 2012, Jennifer Doudna of UC Berkeley and Emmanuelle Charpentier, now at the Max Planck Institute of Infection Biology in Berlin, filed a patent application covering the use of CRISPR-Cas9 gene-editing technology in all cells, including prokaryotes and eukaryotes.
Charpentier and Doudna published their paper about CRISPR in Science magazine in June 2012, while Zhang published his in the same magazine in January 2013, explaining the CRISPR technology.
In April 2014, the U.S. Patent and Trademark Office (USPTO) granted the patent to Zhang, who applied for it seven months later than Charpentier and Doudna, according to foreign news reports.
It is believed that Zhang paid an extra fee to fast-track his application, shortening the process to less than six months, and was ultimately awarded the patent.
In April 2015, UC Berkeley appealed to the USPTO for what was called a "patent interference," claiming that Dounda's patent application overlapped with Zhang's.
Despite the legal battle, Doudna, Charpentier and Zhang shared the 2016 Tang Prize in biopharmaceutical science for "the development of CRISPR-Cas9 as a breakthrough genome editing platform that promises to revolutionize biomedical research and disease treatment."
CRIPSR is a promising technique for making specific changes in the sequence of DNA, which could be used to produce new treatments and even cures for genetic diseases.
The three scientists attended the Tang Prize award ceremony in Taipei in September, delivering speeches on the same stage. They expressed no animosity toward each other when they were asked about the patent issue.
In separate interviews with CNA at the time, the three Tang Prize laureates said they did not see the dispute as personal or as an obstacle to future biopharmaceutical research using the method.
(By Elaine Hou)