08 October 2024

Two CRISPR patents pulled from EPO appeals citing procedural concerns

In a surprise move, the representatives acting on behalf of UC Berkley defending CRISPR patents in appeal proceedings before the EPO have withdrawn their approval of the texts of the patents thereby revoking them and bringing the appeal proceedings to an end. When doing so, the representatives justified the withdrawal referencingserious procedural concerns” arising from the Board of Appeal handling of appeal T2229/19, a decision Mathys & Squire are seeking to reverse through an application for Petition for Review.

In T2229/19 a Board held as inadmissible a request to delete two dependent claims solely on the grounds that although the deletion would have addressed all the objections considered so far, the deletion would not prima facie overcome the Board’s preliminary opinion on a different, yet to be discussed issue, namely sufficiency of disclosure.

In the CRISPR appeal, UC Berkely’s representatives concluded that given that the chairperson and rapporteur in their appeal were also members of the Board in T2229/19, the risk that the Board would adopt a similar approach in their appeal was such that the Patentees could not “be expected to expose the Nobel-prize winning invention protected by the … patent[s] to the repercussions of a decision handed down under such circumstances, when other members [of the patent family were] still at a stage where the Patentees [could] ensure that they [would] ultimately be fully heard on all substantive issues.

It is highly unusual for a patentee to withdraw their approval of the text of a patent during appeal proceedings and accompany such a withdrawal with an expansive statement as to why a patent is valid and why the patentees have concerns about the expected handling of a case by a Board of Appeal.

It could well be that UC Berkley were merely providing cover for a withdrawal which will significantly delay the EPO making a final ruling on the validity of a patent. Certainly, that was the view of the representatives of the opponents who described the withdrawal as “a transparent move to avoid any possibility of an adverse decision” which they claimed was “justified by a (spurious and hypothetical) concern about the future conduct of the Board.

However, if UC Berkley’s concerns are to be taken at face value, they raise serious questions about the EPO Boards of Appeal and in particular the Rules of Procedure which were introduced in 2020.

Those Rules of Procedure sought to emphasise that EPO Appeals should be restricted to a review of the proceedings at first instance and reduce the extent to which new matters might be raised on appeal. However, it is evident, that in some areas this has led to inconsistencies in approach. In our Petition for Review we noted that two distinct approaches [1]  to the deletion of dependent claims during appeal proceedings (neither of which had been followed by the Board in that case) had arisen.

UC Berkely noted that our Petition for Review against T2229/19 could be pending for quite some time. Although the Petition for Review procedure was intended to be as simple and short as possible and prior to 2020, Petitions for Review were typically resolved in around 10 months, evidently that is no longer the case as was clearly demonstrated with the four-and-a-half year time period taken to resolve the Petition for Review in R1/20 which was finally resolved in July this year.

In the meantime, even though a Petition for Review is pending against it, T2229/19 serves as a potential precedent to be followed in other EPO Appeals and indeed recently another EPO Board of Appeal in T172/22 referred to T2229/19 as a precedent for refusing to allow claims to be deleted during appeal proceedings.

When Board of Appeal decisions result in the filing of Petitions for Review and cause the withdrawal of high-profile appeals, the apparent inability of the EPO to rule on such Petitions in a timely manner is very concerning.


[1] T1480/16 vs T1224/15