Seeking to simplify the increasingly complex patent landscape for the gene-editing technique CRISPR/Cas9, Broad Institute of MIT & Harvard has applied to place its patents into a new pool that would provide nonexclusive licenses for commercial users.
However, so far the University of California, Berkeley, the other big patent owner, has not signaled that it will participate in the pool. Indeed, Broad and UC Berkeley have been engaged in a high-stakes patent fight since late last year. And Berkeley is waiting for a ruling on its CRISPR/Cas9 patent application by the U.S. Patent & Trademark Office.
For biotechnology companies seeking to use the gene-editing tool, a patent pool could be a one-stop shop providing access to multiple patents under one license. Instead of granting exclusive rights, the pool would give licenses to all companies and apply the same pricing scheme.
But according to Jorge L. Contreras of the University of Utah College of Law, most applications using CRISPR might need both Broad and Berkeley patents. “The most effective pools are the ones that have substantially all of the patent holders there,” he says.
Berkeley has already licensed patents to firms connected to its CRISPR/Cas9 inventors Jennifer Doudna and Emmanuelle Charpentier, now at the Max Planck Institute for Infection Biology. Those companies include CRISPR Therapeutics, Caribou Biosciences, and ERS Genomics. In turn, those firms sell licenses to other companies.
For example, ERS Genomics granted DuPont Pioneer an exclusive license to its CRISPR-Cas9 patents for agriculture applications. That means that other agriculture biotech firms must work with Pioneer—a potential competitor—to use the technology.
“We seriously consider all requests for sublicenses to the intellectual property under DuPont Pioneer’s control, and terms are tailored on a case-by-case basis,” says Neal Gutterson, vice president of R&D for DuPont Pioneer.
Pioneer and other firms that control CRISPR intellectual property say they favor wide use of CRISPR/Cas9 technology, but they have not voiced support for a patent pool. Contreras suggests that support for a pool may be limited to firms in gene-editing tool development, CRISPR reagents, or smaller applications such as animal health.