Today on December 10, the anniversary of Alfred Nobel's death, the Nobel Prize Medal will be awarded - digitally this year. This year's Nobel Prize in Chemistry goes to the two researchers Emmanuelle Charpentier and Jennifer A. Doudna for their invention of CRISPR/Cas9. The committee calls it: a tool to rewrite the code of life.

Since their groundbreaking invention in 2012, the use of CRISPR and its research has exploded. Since then, countless patent applications have been filed for the new technology.

Noch Anfang diesen Jahres erlitten die direkten Konkurrenten auf dem Gebiet der Grundlagenpatente in Bezug auf CRISPR, das Broad Institute um den Wissenschaftler Feng Zhang einen Rückschlag vor dem Europäischen Patentamt. Das Broad Institute hat im Wesentlichen die von den Nobelpreisträgerinnen bekannte Idee auf Säugetiere übertragen und zum Patent angemeldet.  Auch wenn der Rückschlag womöglich aus dem Gesichtspunkt dessen, dass die Erfinder Charpentier und Doudna die Ersten waren, die die genetische Schere entdeckt haben, gerechtfertigt erscheint, scheiterte die Patentanmeldung des Broad Instituts tatsächlich primär an einem formellen Patenterfordernis, deren mangelnde Erfüllung bewirkt hat, dass die Patentanmeldung wegen einem Mangel einer materiellen Patenterfordernis, hier der Neuheit, gescheitert ist.

Sill at the beginning of this year, the direct competitor in the field of basic patents in relation to CRISPR, the Broad Institute headed by its scientist Feng Zhang suffered a setback with the European Patent Office. The Broad Institute essentially transferred the idea well-known from the Nobel Prize winners on mammals and applied for a patent.  Even if this setback may seem justified from the point of view that the inventors Charpentier and Doudna were the first to discover the genetic scissors, the patent application of the broad Institute actually failed primarily due to a formal patent requirement, the lack of fulfilment of which caused the patent application to fail due to a lack of a material patent requirement, which was novelty in this case.

The European patent EP 2 771 468 was declared invalid in January 2020 due to lack of novelty on the basis of an intermediate prior art document and an invalid priority claim.

The European patent application was preceded by a national application in the USA. The inventors were also automatically registered as applicants. However, when the application was filed with the European Patent Office via the PCT procedure, one of the four original applicants no longer appeared as an inventor. The fourth inventor had transferred his priority right to an entity other than the applicant, as the other three inventors had done.

According to the EPO, this led to an ineffective transfer of the priority right for Europe. Consequently, the Opposition Division decided that the Examination Division should not have granted the parent patent.

The applicant filed an appeal. Without success. The Board of Appeal had to consider three questions for its decision:

1. should the EPO or national courts assess the priority claim?

2. how should the expression "any person" under Article 87(1) of the European Patent Convention be interpreted?

3. does national law - in this case US law - regulate the term "any person" who has "duly filed an application" under Article 87(1) of the EPC?

In its decision (T 844/18), the Board of Appeal stated that the EPO had the right to decide on the priority claim. In addition, the Board of Appeal confirmed that all applicants must be listed both in a first application and in a subsequent application to the European Patent Office in order for the European Patent Office to grant priority. It also decided that the Paris Convention was sufficient to determine who "each person" is.