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University of California's Foundational CRISPR-Cas9 Patent Portfolio Reaches 20 Total U.S. Patents

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University of California, Berkeley

The University of California, Berkeley issued the following statement on December 31, 2019:

University of California's Foundational CRISPR-Cas9 Patent Portfolio Reaches 20 Total U.S. Patents

Today, the U.S. Patent and Trademark Office (USPTO) granted a new CRISPR-Cas9 gene-editing patent (U.S. Patent 10,519,467) to the University of California (UC), University of Vienna, and Dr. Emmanuelle Charpentier, marking the 20th patent in the university's CRISPR-Cas9 portfolio. The '467 patent includes claims directed to methods of producing genetically modified cells using CRISPR-Cas9.

In 2019, UC's intellectual property protection for the technology has grown exponentially to include 18 new U.S. patents. UC's collection of U.S. and foreign patents for CRISPR-Cas9 gene-editing is diverse and encompasses numerous compositions and methods, such as targeting and editing genes and modulating transcription in any setting, including within plant, animal, and human cells, with CRISPR-Cas9. Looking ahead to 2020, UC has received notices of allowance from the USPTO for five additional patent applications, further bolstering its expansive portfolio. 

"2019 was an incredibly important and fruitful year in our continuous efforts to sustain UC as the leader of CRISPR-Cas9 gene-editing intellectual property in the United States," said Eldora L. Ellison, Ph.D., lead patent strategist on CRISPR-Cas9 matters for UC and a Director at Sterne, Kessler, Goldstein & Fox. "We are encouraged by the USPTO's recognition of the Doudna-Charpentier team's leadership on CRISPR-Cas9 this year and look forward to continuing to expand our portfolio in 2020, so a wide range of methods and applications of the technology can be used for the benefit of humankind."

The Doudna-Charpentier team that invented the CRISPR-Cas9 DNA-targeting technology included Jennifer Doudna and Martin Jinek at the University of California, Berkeley; Emmanuelle Charpentier (then of Umea University); and Krzysztof Chylinski at the University of Vienna. The methods covered by the '467 patent, as well as the other compositions and methods claimed in UC's previously issued U.S. patents and allowed U.S. patent applications, were included among the CRISPR-Cas9 gene editing technology work first described by the Doudna-Charpentier team in its May 25, 2012 priority patent application.

UC's previously-issued U.S. CRISPR-Cas9 patents are not a part of the interference declared by the Patent Trial and Appeal Board of the USPTO in June 2019 between 14 UC U.S. patent applications and multiple previously issued Broad Institute U.S. patents and one U.S. patent application, which jeopardizes essentially all of the Broad's CRISPR patents involving eukaryotic cells.

International patent offices have also recognized the pioneering innovations of the Doudna-Charpentier team, in addition to the 20 patents granted in the U.S. so far. The European Patent Office (representing more than 30 countries), as well as patent offices in the United Kingdom, China, Japan, Australia, New Zealand, Mexico, and other countries, have issued patents to UC for the use of CRISPR-Cas9 gene editing in all types of cells.

The University of California has a long-standing commitment to develop and apply its patented technologies, including CRISPR-Cas9, for the betterment of humankind. Consistent with its open-licensing policies, UC allows nonprofit institutions, including academic institutions, to use the technology for non-commercial educational and research purposes.

In the case of CRISPR-Cas9, UC has also encouraged widespread commercialization of the technology through its exclusive license with Caribou Biosciences, Inc. of Berkeley, California. Caribou has sublicensed this patent family to numerous companies worldwide, including Intellia Therapeutics, Inc. Additionally, Dr. Charpentier has licensed the technology to CRISPR Therapeutics AG and ERS Genomics Limited. UC's licensee and sublicensees are developing the patented technology for the advancement of society, including for use in human therapeutics, animal health, agriculture, research reagents, and anti-microbial therapies.

A variety of media outlets carried the UC Berkeley coverage, including MarketsInsider and Life Sciences Intellectual Property Review.