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What's better, the Nobel Prize or Patent for CRISPR?

Jennifer Dounda, from University of California Berkeley, and Emmanuelle Charpentier, from France, invented the CRISPR-CAS system which they used to edit DNA in a microbe cell.

Dounda and Charpentier won the Nobel Prize for their work. However, they did not win the patent in the USA (they did obtain a EU patent).

The Broad Institute (associated with Feng Zhang and the Massachusetts Institute of Technology) owns the patent to CRISPR-CAS technology in the USA. Zhang's scientific article about CRISPR-CAS system and mammalian cells was published after the article by Dounda/Charpentier.

UC Berkeley lost two CRISPR-CAS cases to the Broad Institute, the latest in February of 2022. Presumably, this means UC Berkeley lost money and scientists lost time while their institutions return to boardrooms to renegotiate patent licenses.

The Nobel Prize is awarded by a subjective weighing of merit. The US Patent and Trademark Office is first-to-file.

The USA used to be first-to-invent. The USA changed to first-to-file in 2013 with the America Invents Act. Some of the patents at issue in the CRISPR-CAS case were pre-AIA and some were post-AIA, creating a complicated patent record considering both who was the first inventor and who filed first. Another issue that drew out the litigation was whether the information Zhang obtained from Dounda before filing his patent meant his patents were invalid (the courts said "no") and whether Zhang obtained some of his patents improperly (the courts said "no").

The 7+ year fight over patents by two university groups prompts the question of "Was it worth it?" Shouldn't that money have gone towards student housing scholarships? The Broad Institute, the eventual winner in these cases, issued a public relations statement playing off this populist sentiment: “Broad believes that all institutions should work together to ensure wide, open access to this transformative technology.” That's rich coming from the winner. The patents help bring in money into the university. By giving up and letting the Broad's patents survive, Berkeley was hurting their bottom line.

There was some discourse of Zhang being robbed of the Nobel Prize. The CRISPR patent cases prompt questions of merit and what does it mean to invent something. Having the question of who gets the Nobel Prize happen simultaneously with patent litigation caused lots of news coverage (see further reading below).

Berkeley didn't defend these patents because they care about merit or first-to-invent, the universities fought for the money they earn from licensing.

Berkeley and MIT/Harvard (the collaborators behind the Broad Institute) have a different bottom line than single inventors and businesses. Berkeley has a Board of Regents they must answer to, but they don't have stock that can crash. Fame with a Novel Prize can carry monetary worth in keeping professors and students for a university while such prizes are not worth as much in the public sector where scientists hop from one company to the next.

The Polaroid Corporation engaged in a long patent battle with Kodak. Combined with other set-backs, the instant camera patent case contributed to Polaroid's demise. Was it worth it? I don't think it was worth it for Polaroid. Their patent fight caused a brain drain in the company and irrevocably hurt their stock even though they won the fight.

Berkeley, Dounda, and Charpentier have a Nobel prize, public university money, and fame. Zhang and the Broad Institute have the patents, private institute money, and fame. CRISPR-CAS is probably not a Polaroid v. Kodak situation. But your patent litigation could be a Polaroid case. It's important to ask if it's worth it's worth the money and time to fight a case where the question isn't "are you a meritorious scientist" but "is the law on your side"?


Further Reading:

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