Tough PTAB Fight Ahead For Breakthrough Gene-Editing TechJanuary 12, 2016 – In The News
Gerard P. Norton, Ph.D. was featured in the Law360 article “Tough PTAB Fight Ahead For Breakthrough Gene-Editing Tech” Full text can be found in the January 14, 2016, issue, but a synopsis is below.
Billions of dollars in licensing revenue may be at stake as the University of California, Berkeley and the Massachusetts Institute of Technology and Broad Institue head to the Patent Trial and Appeal Board (PTAB) to determine who first invented the gene-editing technology known as CRISPR.
“This technology is huge. It’s multibillion-dollar technology,” said Fox Rothschild’s Gerard Norton. “It’s a game changer to be able to edit DNA.”
Due to dates at which the patents were originally filed by the schools, the PTAB has declared interference which places all of the patents issued by MIT under review.
“They have their own set of rules you have to follow that are date-sensitive and unforgiving. If you snooze, you lose,” Norton said. “Interferences are a real specialty, and few attorneys handle them, but I’m sure both sides here have hired the best.”
The group of scientists at the University of California, Berkeley has not been issued a patent at this point in time, but some believe they still may have the upper hand due to the PTAB designating them as the “senior party.” Although this is true, being titled the senior party is not a guarantee of victory.
“The sky’s the limit, and the stakes are huge, but right now, no one can tell you who is going to win the interference,” Norton said. “It’s like a game of poker: No one know what the other side’s hand is.”
Another option that is available to the parties involved is settling the interference with an arrangement that would give certain rights to the technology to both of the schools.
“There’s a tremendous advantage here to settle,” Norton said. “It seems to me that a business solution is not out of the question.”
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