Gene editing start-ups ink CRISPR IP agreement
Three gene editing startups, Intellia Therapeutics, Caribou Biosciences and CRISPR Therapeutics, have signed an agreement surrounding the intellectual property of the hotly contested revolutionary gene editing technology CRISPR/Cas9. The companies have entered into the deal with Emmanuelle Charpentier of the Helmholtz Centre and the University of California. The deal encourages all parties to enforce and protect CRISPR's IP and clarifies the worldwide IP position of its signatories. Many will see this move as a hedge against any potential fallout from the current patent lawsuit between MIT/Harvard and UC Berkeley for the IP rights to CRISPR/Cas9, which may total many billions of dollars.
Three developers of treatments based on CRISPR/Cas9 and a company that facilitates nonexclusive licensing of the gene-editing technology said today they have signed a global cross-consent and invention management agreement for the foundational intellectual property covering CRISPR/Cas9.

The three developers—CRISPR Therapeutics, Intellia Therapeutics, and Caribou Biosciences—and ERS Genomics have entered into the agreement with CRISPR IP co-owners, the Regents of the University of California (UC), Emmanuelle Charpentier, Ph.D., of the Helmholtz Centre for Infection Research, and the University of Vienna

Signers of the agreement committed to maintain and coordinate the prosecution, defense, and enforcement of the CRISPR/Cas9 foundational patent portfolio worldwide, while each co-owner of the intellectual property grants cross-consented to all existing and future licenses and sublicenses based on the rights of another co-owner.

Eric Rhodes, CEO of ERS Genomics, told GEN the significance of the agreement was that it:

Better coordinates how patent prosecution will be handled among all owners of the IP

Details how patent prosecution costs will be shared among the companies

Provides consent from all owners to the existing and future licenses granted. Consent of multiple patent owners is required for licensees to obtain full rights to IP in Europe, though not in the U.S.

“What this agreement has done is, it has given consent from all of the owners to all of the licensees, both past and future, which clears up the (consent) issue for a lot of people. That’s the business effect that is important to ERS,” Rhodes said.

The agreement comes more than a week after a three-judge panel of the Patent Trial and Appeal Board (PTAB) heard oral arguments in the ongoing legal battle royal over who invented CRISPR, which stands for clustered regularly interspaced short palindromic repeats.

UC Berkeley and Dr. Charpentier are challenging the awarding of 12 patents related to CRISPR technology that list as inventor Feng Zhang, Ph.D., of the Broad Institute of MIT and Harvard.

“There are additional claims in the Charpentier–Doudna IP that are very fundamental to the use of CRISPR/Cas9. Regardless of the outcome of the interference, specifically, those claims still will be very broad and fundamental,” Rhodes said. Jennifer Doudna, Ph.D., of UC Berkeley, joined Dr. Charpentier and colleagues in publishing the seminal 2012 paper describing CRISPR.

“We still feel strongly that even regardless of the outcome of the interference proceeding in the U.S., there are fundamental claims that are likely to grant,” Rhodes added. “We believe that’s one of the reasons why people are looking at this IP in a business perspective and saying, if they want to commercialize that, they realize that this is probably one of the pieces that they will need.”

He said ERS is seeing “quite a bit of interest” in the technologies covered by the patents in industry microbiology, and even aquaculture: “This is something we hadn't really thought much about, but there's an interest now in applying the technology there to not only study different sorts of organisms, but perhaps use the technology in beneficial ways.”

One group ERS has spoken to is looking use CRISPR technology to help make an engdangered species resistant to a disease. Licensees are almost strictly companies looking to commercialize the CRISPR technology, though some are affiliated with academic research groups, Rhodes added.

In a statement, Rodger Novak, M.D., Ph.D., CEO of CRISPR Therapeutics, said: “We believe that the Charpentier–University of California–Vienna IP estate constitutes the foundational IP in the CRISPR/Cas9 editing space.”

“Intellia, CRISPR Therapeutics, Caribou, and ERS view this agreement as enhancing the efforts to protect our shared intellectual property rights and support the ongoing development of our product candidates, as well as those of our corresponding partners and licensees,” added Dr. Novak, who co-founded CRISPR Therapeutics with Dr. Charpentier and Shaun Foy in November 2013.