SAOSIT and CRISPR in the News

This blog post reminds us of the extreme importance of SAOSIT.  CRISPR is an extremely important technology and several organizations are competing to see who will make money from CRISPR.  A chief part of that competition is a fight to see who will control the most patents relating to CRISPR.  Article 4 of the Paris Convention for the Protection of Industrial Property says that for a patent priority claim to be valid, the second patent application needs to have been filed by the same applicant as the applicant in the first patent application, or by the successor in title.  We call this SAOSIT (same applicant or successor in title).  On January 16, 2020 the Board of Appeal at the European Patent Office made an important decision that relates to CRISPR and SAOSIT.  The decision offers a reminder of ways that a patent applicant needs to be very careful when carrying out the filing of a PCT application or regional patent application or national patent application that makes a priority claim under Article 4 of the Paris Convention.  The decision also offers a reminder of the ways that a patent applicant needs to be very careful when filing a US provisional patent application.

(It will be appreciated that while CRISPR (Wikipedia article) is an acronym, SAOSIT (blog post) is not.  SAOSIT is a mere initialism (blog post).) 

What we are looking at is European patent application number 13818570.7 (European Patent Register link).  This is the regional phase of a PCT application number PCT/US2013/074819 (Patentscope permalink).

It is easy enough to see just what went wrong in the filing of this PCT application and its priority applications.  As you can see from the Patentscope page, the applicant in the PCT application was:

• The Broad Institute, Inc.
• Massachusetts Institute of Technology
• President and Fellows of Harvard College

Everybody has heard of MIT.  Everybody has heard of Harvard.  In the world of biotech, everybody has heard of “The Broad” (Wikipedia article).  But anyway yes there were three applicants.  And by definition when one enters the European regional phase from a PCT application, the applicants are the same in the EP application as in the PCT application.

The PCT application claimed priority from twelve US provisional applications:

• 61/736,527 
• 61/748,427 
• 61/758,468
• 61/769,046 
• 61/791,409 
• 61/802,174
• 61/806,375 
• 61/814,263 
• 61/819,803 
• 61/828,130 
• 61/835,931 
• 61/836,127 

The EPO is among the intellectual property offices that take the position that the SAOSIT condition needs to have been satisfied prior to the time of filing the second application.  In a case like the present case, this would mean that SAOSIT would need to have been satisfied prior to the time of filing the PCT application.  From Patentscope we can see when the PCT application was filed — December 12, 2013.  Let’s take a look at the first of the priority applications, namely a provisional application number 61/736,527.  It is possible to look it up in Public PAIR.  

One way that the priority claim could have worked out for the owner of the EP patent is if this provisional application had had the same three applicants — The Broad, MIT, and Harvard.  Let’s go look.  From Public PAIR we can see the Filing Receipt quoted at right.  No, it is not the same three applicants.  According to this Filing Receipt, the applicants in the provisional application were:

• Feng Zhang
• Le Cong
• Naomi Habib
• Luciano Marraffini

How did it happen that the applicant in this provisional application was a list of human beings rather than legal persons such as The Broad and MIT and Harvard?  The answer of course is that the provisional application was not filed with an Application Data Sheet but was instead filed with a mere Provisional Cover Sheet.  First practice tip:  follow best practices set forth here and among other things, never use merely a Provisional Cover Sheet when filing a US provisional patent application.

There was a flurry of work in the days leading up to December 12, 2013, which was the one-year anniversary of the filing of this provisional application.  There was a petition filed on December 11, 2013 to add four more names to the inventor list for this provisional patent application, namely:

• David Benjamin
• Turitz Cox
• Patrick Hsu
• Shuailiang Lin

The petition did not get acted upon at the USPTO until May 12, 2014.  So the question of who exactly the applicants were on the day that EPO cares about (December 12, 2013) might be a bit fuzzy — maybe four applicants, maybe eight.

But regardless of whether on December 12, 2013 the number of applicants was four or eight, this would not have had to be fatal to the priority claim.  While the simplest way to perfect the priority claim is to have the same applicant in the second application as in the first, Article 4 also says that in the second application you can use the “successor in title” as the applicant. 

The EPO takes the position that for this to work, the clean-up paperwork to satisfy the “successor in title” condition needs to have been executed chronologically prior to the filing of the second application.  Here that would mean the signing of assignments from these four inventors (or maybe these eight inventors) over to the three entities prior to December 12, 2013.  From Public PAIR, we can click on the Assignments tab.  We see that forty-one assignment recordations have taken place on this provisional application.  Thirty-two of the recordations recite an execution date of December 10, 2013.  Two more recordations recite an execution date of December 12, 2013.   It is clear that there was a flurry of assignment clean-up work being done to try to satisfy SAOSIT.

You can click through and look at the documents one by one.  No document with an execution date on or before December 12, 2013 was to Harvard.  Some of the documents list an assignee of The Rockefeller University.

So in the EPO, was SAOSIT satisfied for this priority claim?  You can look in the EPR file, and you will perhaps be bemused to see that the application file for the European application by now contains one thousand nine hundred ninety-nine documents amounting to forty-six thousand twenty-eight pages.  The application file is so thick because several third parties had asked the EPO to revoke the granted European patent.  They argued that the filer of the PCT application had failed to satisfy SAOSIT, and that for this reason the priority claims were invalid, and that for this reason some intervening prior art had to be taken into account in working out the novelty of the invention. 

The third parties prevailed, and the patent owner lost.  You can see EPO’s January 17, 2020 announcement here.  

A chief lesson is that the Best Practice is simply to use an ADS to identify the non-inventor applicant that matches the applicant that will be listed in the second application (for example a PCT application).