What the CRISPR Dispute Teaches Universities About Patent Management

April 7, 2017 Tara Klamrowski

When one thinks of the top players in the patent space, most of the time large private tech companies like IBM and Qualcomm come to mind. However, universities are some of the top patent holders and patent filers in the world. Many file and obtain several hundred granted patents per year, meaning our higher education institutions often manage portfolios of patents numbering in the thousands.  

In addition to having a high volume of patents to manage, universities are also the stewards of some of the most important patents in the world. For example, Stanford University owns Google’s famous “Page Rank” patent, which protects Google’s famous ranking algorithm. Another example is Remicade, a blockbuster arthritis drug invented by a professor at New York University. NYU has collected tens of millions of dollars in royalties from the Remicade patents. And recently, NYU (along with Johnson & Johnson) has even appealed a patent infringement verdict from a suit they jointly filed against Celltrion Healthcare and Pfizer’s unit Hospira in 2015.

Another set of famous university-owned patents that has recently been the subject of litigation are the patents that cover CRISPR, an advanced genome-editing tool. CRISPR Is famous for making genome editing much simpler and easier than any other tool or system in existence, and as such has become very valuable in a multitude of industries.

Two separate coalitions of scientists and investors both claim they own patents protecting CRISPR. One coalition, which includes UC Berkeley and the University of Vienna, was the first to file a patent covering CRISPR. The other coalition, which includes the Broad Group, Harvard and MIT, filed a set of patents after UC Berkeley. However, the Broad coalition took advantage of the PTO’s fast track examination, and were able to move their patents through the examination process more quickly, obtaining grant dates while the Berkeley patent was still pending.

At the request of the UC Berkeley coalition, a patent interference proceeding was instituted. The Patent Trial and Appeal Board ultimately found no interference-in-fact and that each of the parties claimed distinctly patentable subject matter. Thus, this ruling has cleared the way for both sets of patents to be granted.

The CRIPSR battle illustrates that for universities with large portfolios filled with valuable patents, it is more crucial than ever that they implement a comprehensive management solution, allowing them to optimize their prosecution practices. This is particularly true for patents covering inventions that may have broad applicability or have a high potential to be licensed to the private sector, like the CRISPR tool.

Patent analytics platforms like LexisNexis PatentAdvisor® can help universities stay on top of their portfolios. PatentAdvisor™ users can view a wide variety of predictive analytics and tailored recommendations that can help streamline the prosecution of individual patents, groups of patents, or even entire art units. These tools also give universities the ability to quickly evaluate their prosecution practices to see if they are truly benefiting their patent portfolios, such as whether they should utilize track one prioritized examination like in the CRISPR case. Thus, these patent analytics tools allow universities to derive the maximum potential value from their protected inventions. 

 

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