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Duelling Patents: What Happens When Intellectual Property Goes Head-To-Head?

Technological breakthroughs no longer come from individuals, but groups working in parallel. Sorting out who owns the ideas is a tricky business.

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Technological breakthroughs no longer come from individuals, but groups working in parallel. Sorting out who owns the ideas is a tricky business.

Opinions

Duelling Patents: What Happens When Intellectual Property Goes Head-To-Head?

Technological breakthroughs no longer come from individuals, but groups working in parallel. Sorting out who owns the ideas is a tricky business.

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Technology is now a very crowded and multilayered field. A world away from the history of individual scientists developing their ideas in isolation and struggling to get them heard, it’s now the case that multiple scientists work in parallel on similar technology in labs across the world.

In an age of constant, sustained discovery and the rapid exchange of ideas, it has become very difficult to ascertain ownership, especially when multiple inventors have been working on similar inventions.

To further complicate matters, the US recently made an important change in the way it recognises ownership of inventions. While it used to grant a patent to the first person to invent a new technology, it now awards ownership to the first inventor to file for a patent.

This is closer to the system elsewhere in the world, but the transition has led to some bitter feuds, with multiple inventors fighting over who the rightful owner is.

This isn’t ideal for the scientists and technicians working at the forefront of discovery, and it’s also having negative effects on implementers of the technology.

These users can find themselves caught in the middle of a patent war, finding themselves with restricted access to certain technologies due to complicated and segmented licensing systems emerging from patenting feuds.

These bitter battles can disrupt the rapid adoption of new scientific tools and technologies. So what happens when inventors go to war over ownership – and how can businesses avoid the same situation?

A case in point

Perhaps the best example of these fraught situations is the CRISPR-Cas9 – essentially a pair of sat-nav guided gene-editing scissors.

In 2012, more than twenty years after it was discovered that microbes living in the salt marshes in the Spanish Costa Blanca possessed unusual DNA sequences, Emmanuelle Charpentier (then at the University of Vienna) and Jennifer Doudna (University of California) unveiled a revolutionary new piece of biotechnology.

The CRISPR-Cas9 “scissors” exploit a natural self-defence system in microbes to make tailored changes to human, animal or plant genes. The applications are startling; the scissors could potentially clear viruses from the body, correct genetic faults, help with supplies of transplant organs and even find out why gene faults lead to cancer.

At the same time, a group of researchers lead by Feng Zhang at Massachusetts’s Broad Institute showed how the same technology could be applied to mammalian cells. At face value, the story of the CRISPR-Cas9 is an extraordinary example of scientists collaborating and building on one another’s work, resulting in giant leaps in science.

But from an intellectual property standpoint, the reality is much less uplifting: both sets of inventors filed for rival and conflicting patent portfolios.

The case of the CRISPR-Cas9 has now evolved into an intellectual property minefield, with rushed applications leading to a stalemate of disjointed patent coverage across the US and Europe, potentially resulting in several owners around the world.

And of course, any effort to claim outright ownership of the technology has been met with strong opposition from either side of the argument.

The knock-on effect

While this may seem like a land grab among academics, the consequences for users of the technology are very real. These users now face a dilemma over which patentees they should approach – they will probably have to pay license fees to someone - and the feud makes this decision difficult.

Some have suggested that a method such as patent-pooling – enabling implementers to license the whole package – could be a fitting solution to the problem. However the animosity between the two camps makes this option look unlikely.

Users can begin to work with patent owners to secure early agreements on access to the technology, taking the risk that they may end up paying a patentee who is ultimately unsuccessful in their claims to territory.

Patent vs. patent

The CRISPR-Cas9 example may be technical, but it does offer some interesting lessons for businesses on the way they approach their patent strategy. Innovative businesses may want to rethink their patenting strategy.

The Broad Institute, for example, has been proactive in expediting prosecution, breaking its work down into smaller elements (the “patent thicket” approach).

At the heart of the dispute, there is also a lesson to be learned on confidentiality and discretion. Statements made by the University of California regarding their work with the technology have come back to bite them in the resulting patent battle.

Monitoring the information that is released as a business can help avoid any difficulties later on down the line. And ensuring that inventorship and ownership are clearly defined from the very beginning is important – the inventors of the CRISPR-Cas9 find themselves in this situation due in part to confusion over ownership of crucial rights.

Ultimately, the CRISPR-Cas9 situation demonstrates the need for a well-informed and robust intellectual property strategy.

Setting out well-defined parameters for establishing ownership, patent filing and communications at the outset can minimise difficulties for inventors and users alike, and help encourage the full exploitation of whichever technology is around the next corner.

Mark Pearce, partner at national law firm Mills & Reeve.

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Duelling Patents: What Happens When Intellectual Property Goes Head-To-Head?

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