Some consensus in the CRISPR patent case

On Friday, four companies founded in the CRISPR space announced they had formed an IP alliance.

CRISPR Therapeutics, Intellia Therapeutics, Caribou Biosciences, and ERS Genomics all formally agreed to honor each other’s licensing deals with the Regents of the University of California, Emmanuelle Charpentier, and the University of Vienna.

The companies represent one side of the high-profile patent interference case currently underway in the United States. The alliance is somewhat of a formality, said ERS Genomics CEO Eric Rhodes, officiating an unwritten agreement between the different groups.

“What this did was basically memorialize how we will pursue the patent prosecution, who has a say in what,” Rhodes said in a phone interview. “Things that have already been happening but that will now be memorialized.”

The agreement also outlines the distribution of legal costs. By far the most important aspect, however, is the global acknowledgment of each other’s rights to the technology.

In the U.S., any one owner of a patent can independently license the invention. That’s not the case in other regions, which require the consent of all those named in the filing.

Since 2013, Charpentier and Doudna have independently licensed rights to the same invention. Doudna, working through the University of California, founded Caribou and Intellia, while Charpentier created CRISPR and ERS. 

The IP alliance globally validates those agreements, even though the initial contracts weren’t signed by the three owners of the patents.

According to Rhodes, the field has so much potential, there is no need to cut other companies off.

“I think that’s the goal of all the groups involved here,” he said. “The CRISPR space is so large. There are so many applications of it — even just in the human healthcare space. I don’t think it’s a problem that there are three major companies already focused just on CRISPR technology for human healthcare applications. They’re all pursuing different indications. There are so many other indications to pursue.”

Rhodes acknowledged that not all companies feel the same. And behind each is a group of investors who also have a say. Yet the IP alliance is proof that shared ownership of the IP can work. Could that extend to the major interference case?

“I wouldn’t be surprised in a case like this to see some type of cross-licensing negotiations going on between the parties,” said Brent Babcock, a partner at Knobbe Martens, an intellectual property law firm.

That would involve a settlement with the group’s opponents, The Broad Institute and Harvard, which have licensed their patents to Editas Medicine.

According to Babcock, both parties are obliged to regularly meet for settlement discussions as part of the interference proceedings. If successful, this could generate a compromise instead of an all-or-nothing ruling on aspects of the patents, which could put some CRISPR companies in peril.

Rhodes was unable to comment on cross-party negotiations at the time of the interview. However, he did express a willingness to work with different groups to increase access to the technology — something he is able to negotiate as CEO of ERS.

Headquartered in Dublin, Ireland, ERS Genomics is a little-known yet central player in the dispute. It is essentially a commercialization engine, founded by Emmanuelle Charpentier to expand licensing agreements from the patents she co-invented.

Charpentier worked extensively with Jennifer Doudna at UC Berkeley, helping to develop the technique required to work with CRISPR/Cas9. Because she was working in Sweden when the key IP was filed, Charpentier is the one individual alongside many institutions claiming ownership of the technology.

To manage the complex tech exchange, Charpentier and two others established ERS in November 2013.

“We have a very, very broad field and a broad mandate to get out there and license the technology so people can use it in a variety of areas,” Rhodes said.

Despite the legal uncertainty, many companies have signed up, taking a considerable gamble by licensing the disputed technology.

To offset some of that risk, Rhodes said ERS is currently offering a very discounted rate. The model acknowledges that some aspects of the patents are up in the air and that they might prove worthless if the interference doesn’t go Charpentier’s way. If they do win, it would be a milestone in the licensing agreement and the price would increase as a result.

It was a business model designed to keep the field moving despite the looming doubt over who owns the patents. In all but one instance, ERS is negotiating non-exclusive licenses to expand the scope of the technology as far as possible.

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