CRISPR Patent Pool May Not be Successful in Providing a Free Commercialization and Development Environment for its Technology

The Clustered Regularly Interspaced Short Repeats (“CRISPR”)-Cas9 is a powerful DNA-editing technology. It has many applications, including crop productivity, malaria-resistance, and potential cures for HIV or cancer. However, further research and commercialization of this technology is hindered by a patent dispute between the University of California at Berkeley (“UC Berkeley”) and the Eli and Edythe L. Broad Institute of MIT and Harvard (“Broad Institute”), in which UC Berkeley has alleged the Broad Institute’s patents either are invalid or otherwise infringe upon their own patent portfolio.

In an effort to promote development of CRISPR, the Broad Institute, Rockefeller University, Harvard University, and MIT recently granted permission for 22 of their CRISPR-Cas9 patents to be a part of a shared, global licensing platform – i.e. a “patent pool.”

However, this patent pool may not be sufficient to allow full commercialization and development of the CRISPR-Cas9 technology. Despite recent attempts at reform, including the passage of the America Invents Act in 2012, patents continue to face issues of conflicting, overlapping, and fragmented rights spread across multiple patent holders. Patent pools are designed to circumvent this problem by providing a centralized holder of patents from which all participants can non-exclusively license. However, if a single patent holder holds a critical patent, it can hold up the entire pool by refusing to contribute its particular patent. Even if other critical patents are held in the pool, depending on how the rights are concentrated or how easily certain technology can be invented around, a holder of a critical patent can have significant bargaining power.

The CRISPR patent pool faces a potential hold-up. Although the U.S. Patent and Trademark Office ruled in February 2017 that the Broad Institute’s CRISPR patents are valid (a decision that UC Berkeley has appealed to the United States Court of Appeals for the Federal Circuit in Washington D.C.), the Broad Institute’s patents are focused on applications of CRISPR to human cells. UC Berkeley still holds the rights to multiple critical – and broader – patents that could curtail the commercial and research activities of the pool members despite their cooperation.

If UC Berkeley wins its patent battle with the Broad Institute, the CRISPR patent pool may not be successful and unrestricted development of this powerful technology may not occur.

Dr. P. Joseph Ahn has expertise in microeconomics, corporate strategy, and quantitative analysis, with particular focus on technology and media industries. His work has included estimating damages, analyzing proposed regulation, and advising on multi-national tax.