6 ms·

Someone summed up the decision as such: UC Berkeley patented tennis balls. Harvard/MIT patented yellow tennis balls. Harvard/MIT won. I realize this example

Someone summed up the decision as such: UC Berkeley patented tennis balls. Harvard/MIT patented yellow tennis balls. Harvard/MIT won. I realize this example is tongue in cheek and imperfect. I also dont pretend to understand the biology, but has anyone produced a good layperson's view of how Harvard/MIT won this? Disclaimer: I'm a graduate student at UC Berkeley.

untilHellbanned 10y ago
use of CRISPR in humans is what Harvard/MIT want to protect. According to the judges, UC Berkeley didn't make that clear. Even being a biologist who understands CRISPR well and having trained at Harvard/MIT (disclosure to provide context about biases), it's not clear what Harvard/MIT will gain with winning this fight. Because the incentive is incredibly strong, I feel like everyone will find a way to work around whatever patents Harvard/MIT collect. I see UC Berkeley's side in these patents because their discovery proceeded Harvard/MIT and Harvard/MIT (Eric Lander) is just sucking up airtime like Trump does to come out on top. See this: http://www.michaeleisen.org/blog/?p=1825 http://www.michaeleisen.org/blog/?p=1825
4258HzG 10y ago
To stretch your analogy: "Tennis balls colored for enhanced human recognition." So they're patenting a method to 'improve' CRISPER, in this case 'adapting' it for use in humans. To technically use the Harvard / MIT patent you may still need the UCB one. Why this happened from my experience patenting through UCB and dealing with Harvard is that UCB does not have the best patent department when it comes to helping inventors draft patents that are defensible in terms of pushing for sufficiently general language, or including defensive dependent claims (like for use humans) for precluding people patenting specific extensions as Harvard/MIT did in this case. (They just put my patent memo in the appropriate legal format with a few minor modifications.) In contrast, Harvard/MIT as organizations are far more serious about intellectual property and have the legal departments to reflect it.
- CalChris 10y ago
  Berkeley's IP office is awful. By comparison, Larry Page patented Page Rank. He assigned it to Stanford, Stanford prosecuted it and licensed it back to him, basically for nothing. There's a lot of trust there between student and institution. Furthermore, Stanford owns and defends the patent and no one fucks with Stanford. https://www.google.com/patents/US6285999 https://www.google.com/patents/US6285999 I say this as a Berkeley grad. University IP departments should be more like Stanford and less like Berkeley.
  - bsder 10y ago
    > I say this as a Berkeley grad. University IP departments should be more like Stanford and less like Berkeley. I disagree. And I think that anything funded with public grant money should be barred from being patented. If you want to patent it, you should have to fund it privately and take all the risk. If there is even a whiff of public money, you shouldn't get to patent it. Look at how much patents retarded the 3D printing industry, for example. Those advances were very much funded by public money, and those patents basically made 3D printing economically infeasible until they expired. We could have had this revolution 30 years ago--that's a huge loss to us as a society. The foundations of the computer industry rest upon the fact that many things escaped being patented because they came from Berkeley. While most people think of Unix, there was something possibly even more important--the circuit simulator SPICE. The FORTRAN code for Spice2(g6?) became the foundation of the entire VLSI ecosystem that gave us the cheap chips that we all take for granted. It spawned an entire industry. And Berkeley never wanted that to happen again. So they locked down the rewrite into C (Spice3(e2?)) and that code never went anywhere. And even 30 years on, it cost the NGSpice guys an enormous amount of duplicated work.
    - jjoonathan 10y ago
      > I think that anything funded with public grant money should be barred from being patented. Grants, green cards, and IP rights are the three pillars of research funding in the US. Any proposal to lop off one pillar needs to come with a plan to replace it or an argument why decimating the US research apparatus is the lesser evil.
peterwwillis 10y ago
https://www.theatlantic.com/science/archive/2017/04/why-uc-is-appealing-the-crispr-patent-decision/522888/?single_page=true https://www.theatlantic.com/science/archive/2017/04/why-uc-i... "The UC’s filing covered gene editing with CRISPR, but it did not specifically cover eukaryotic cells—complex cells that include animal, plants, and humans—where all the lucrative applications are likely to be. The Broad’s patents did cover eukaryotic cells, and its lawyers argued that getting CRISPR to work in bacteria or free-floating DNA did not automatically mean it would work in the more complex environment. Hence, there was no inference—the decision that UC is now appealing." https://www.statnews.com/2017/02/15/crispr-patent-ruling/ https://www.statnews.com/2017/02/15/crispr-patent-ruling/ "The patent board said in its decision that the achievement of the Broad’s Feng Zhang in inventing a way to use CRISPR to edit the genomes of mouse and human cells “would not have been obvious” from the invention by Doudna and Charpentier “because one of ordinary skill in the art would not have reasonably expected a CRISPR-Cas9 system to be successful” in those higher-order cells."
CalChris 10y ago
The tennis ball summation is perfect. However, you can go further with it. UC Berkeley has the right (or they will when their patents issue) to exclude Harvard/MIT (and anyone else) from manufacturing tennis balls. Harvard/MIT also have the right to exclude UC Berkeley (and anyone else) from manufacturing yellow tennis balls. So UC Berkeley and Harvard/MIT will have to have a sit down and do a deal in order for anyone to get any yellow tennis balls manufactured. It's in their best interests to do this deal but first there will be some legal preliminaries. (NB: we are ignoring Design Patents here.)
ChuckMcM 10y ago
I think it would be really interesting if the Supreme Court stepped in an invalidated the patent based on 'natural function' of the Cas9 gene. Not that I expect that to happen just that it would be hilarious if it did.
notlob 10y ago
Berkeley applied for a patent on tennis balls, an application still pending. Harvard/MIT later applied for a patent on yellow tennis balls and paid a fee to accelerate the review of their application. The Harvard/MIT patent was issued first. The recent PTAB trial found that the Berkeley patent application did not interfere with the Harvard/MIT patent, but this does not mean that the Berkeley application will not issue, nor does it mean that one could practice yellow tennis balls (CRISPER/Cas9 in eukaryotes) without licensing both from Berkeley and Harvard/MIT. As to how Harvard/MIT won, part of the PTAB decision relied on general statements made by one of the Berkeley inventors as to the challenges in dyeing tennis balls yellow (getting the CRISPER/Cas9 system working in eurkaryotes) and so demonstrating that the Harvard/MIT inventors had to made an inventive step. That is a pretty profound and worrying development with respect to academic freedom.
- obstinate 10y ago
  Why is it a worrying development with respect to academic freedom? I think I'm getting the sense -- statements you make about how difficult some piece of work is can be used as evidence that the work is difficult, and thus as evidence that someone who does that work has done something inventive. But it doesn't seem like a particularly unusual revelation. Sometimes true things will be to your adversary's advantage. That's always been true.
  - Sacho 10y ago
    I presume parent is worried that this will lead to less open exchange on the academic marketplace - you would not want to have public discussions about anything related to the work you are planning to patent, out of fear you might sabotage it.
    - smallnamespace 10y ago
      That cuts both ways, in that open academic exchange can also be evidence that strengthens your own case. Although I guess the real risk is that lawyers would get end up involved in that process.
  - 10y ago
PL1 10y ago
There has been tremendous lobbying, pressure and marketing from the Broad Institute on this issue. For instance, see: http://www.michaeleisen.org/blog/?p=1825 http://www.michaeleisen.org/blog/?p=1825 I have personally talked to a student at the Broad Institute who told me a number of people there do not agree with the Broad positions (namely the Cell article and Lander's statements). Disclaimer: Also a graduate student at UC Berkeley (not in Bio).

untilHellbanned 10y ago

use of CRISPR in humans is what Harvard/MIT want to protect. According to the judges, UC Berkeley didn't make that clear. Even being a biologist who understands CRISPR well and having trained at Harvard/MIT (disclosure to provide context about biases), it's not clear what Harvard/MIT will gain with winning this fight. Because the incentive is incredibly strong, I feel like everyone will find a way to work around whatever patents Harvard/MIT collect. I see UC Berkeley's side in these patents because their discovery proceeded Harvard/MIT and Harvard/MIT (Eric Lander) is just sucking up airtime like Trump does to come out on top. See this: http://www.michaeleisen.org/blog/?p=1825 http://www.michaeleisen.org/blog/?p=1825

4258HzG 10y ago

To stretch your analogy: "Tennis balls colored for enhanced human recognition." So they're patenting a method to 'improve' CRISPER, in this case 'adapting' it for use in humans. To technically use the Harvard / MIT patent you may still need the UCB one. Why this happened from my experience patenting through UCB and dealing with Harvard is that UCB does not have the best patent department when it comes to helping inventors draft patents that are defensible in terms of pushing for sufficiently general language, or including defensive dependent claims (like for use humans) for precluding people patenting specific extensions as Harvard/MIT did in this case. (They just put my patent memo in the appropriate legal format with a few minor modifications.) In contrast, Harvard/MIT as organizations are far more serious about intellectual property and have the legal departments to reflect it.

CalChris 10y ago
Berkeley's IP office is awful. By comparison, Larry Page patented Page Rank. He assigned it to Stanford, Stanford prosecuted it and licensed it back to him, basically for nothing. There's a lot of trust there between student and institution. Furthermore, Stanford owns and defends the patent and no one fucks with Stanford. https://www.google.com/patents/US6285999 https://www.google.com/patents/US6285999 I say this as a Berkeley grad. University IP departments should be more like Stanford and less like Berkeley.
- bsder 10y ago
  > I say this as a Berkeley grad. University IP departments should be more like Stanford and less like Berkeley. I disagree. And I think that anything funded with public grant money should be barred from being patented. If you want to patent it, you should have to fund it privately and take all the risk. If there is even a whiff of public money, you shouldn't get to patent it. Look at how much patents retarded the 3D printing industry, for example. Those advances were very much funded by public money, and those patents basically made 3D printing economically infeasible until they expired. We could have had this revolution 30 years ago--that's a huge loss to us as a society. The foundations of the computer industry rest upon the fact that many things escaped being patented because they came from Berkeley. While most people think of Unix, there was something possibly even more important--the circuit simulator SPICE. The FORTRAN code for Spice2(g6?) became the foundation of the entire VLSI ecosystem that gave us the cheap chips that we all take for granted. It spawned an entire industry. And Berkeley never wanted that to happen again. So they locked down the rewrite into C (Spice3(e2?)) and that code never went anywhere. And even 30 years on, it cost the NGSpice guys an enormous amount of duplicated work.
  - jjoonathan 10y ago
    > I think that anything funded with public grant money should be barred from being patented. Grants, green cards, and IP rights are the three pillars of research funding in the US. Any proposal to lop off one pillar needs to come with a plan to replace it or an argument why decimating the US research apparatus is the lesser evil.

peterwwillis 10y ago

https://www.theatlantic.com/science/archive/2017/04/why-uc-is-appealing-the-crispr-patent-decision/522888/?single_page=true https://www.theatlantic.com/science/archive/2017/04/why-uc-i... "The UC’s filing covered gene editing with CRISPR, but it did not specifically cover eukaryotic cells—complex cells that include animal, plants, and humans—where all the lucrative applications are likely to be. The Broad’s patents did cover eukaryotic cells, and its lawyers argued that getting CRISPR to work in bacteria or free-floating DNA did not automatically mean it would work in the more complex environment. Hence, there was no inference—the decision that UC is now appealing." https://www.statnews.com/2017/02/15/crispr-patent-ruling/ https://www.statnews.com/2017/02/15/crispr-patent-ruling/ "The patent board said in its decision that the achievement of the Broad’s Feng Zhang in inventing a way to use CRISPR to edit the genomes of mouse and human cells “would not have been obvious” from the invention by Doudna and Charpentier “because one of ordinary skill in the art would not have reasonably expected a CRISPR-Cas9 system to be successful” in those higher-order cells."

CalChris 10y ago

The tennis ball summation is perfect. However, you can go further with it. UC Berkeley has the right (or they will when their patents issue) to exclude Harvard/MIT (and anyone else) from manufacturing tennis balls. Harvard/MIT also have the right to exclude UC Berkeley (and anyone else) from manufacturing yellow tennis balls. So UC Berkeley and Harvard/MIT will have to have a sit down and do a deal in order for anyone to get any yellow tennis balls manufactured. It's in their best interests to do this deal but first there will be some legal preliminaries. (NB: we are ignoring Design Patents here.)

ChuckMcM 10y ago

I think it would be really interesting if the Supreme Court stepped in an invalidated the patent based on 'natural function' of the Cas9 gene. Not that I expect that to happen just that it would be hilarious if it did.

notlob 10y ago

Berkeley applied for a patent on tennis balls, an application still pending. Harvard/MIT later applied for a patent on yellow tennis balls and paid a fee to accelerate the review of their application. The Harvard/MIT patent was issued first. The recent PTAB trial found that the Berkeley patent application did not interfere with the Harvard/MIT patent, but this does not mean that the Berkeley application will not issue, nor does it mean that one could practice yellow tennis balls (CRISPER/Cas9 in eukaryotes) without licensing both from Berkeley and Harvard/MIT. As to how Harvard/MIT won, part of the PTAB decision relied on general statements made by one of the Berkeley inventors as to the challenges in dyeing tennis balls yellow (getting the CRISPER/Cas9 system working in eurkaryotes) and so demonstrating that the Harvard/MIT inventors had to made an inventive step. That is a pretty profound and worrying development with respect to academic freedom.

obstinate 10y ago
Why is it a worrying development with respect to academic freedom? I think I'm getting the sense -- statements you make about how difficult some piece of work is can be used as evidence that the work is difficult, and thus as evidence that someone who does that work has done something inventive. But it doesn't seem like a particularly unusual revelation. Sometimes true things will be to your adversary's advantage. That's always been true.
- Sacho 10y ago
  I presume parent is worried that this will lead to less open exchange on the academic marketplace - you would not want to have public discussions about anything related to the work you are planning to patent, out of fear you might sabotage it.
  - smallnamespace 10y ago
    That cuts both ways, in that open academic exchange can also be evidence that strengthens your own case. Although I guess the real risk is that lawyers would get end up involved in that process.
- 10y ago

PL1 10y ago

There has been tremendous lobbying, pressure and marketing from the Broad Institute on this issue. For instance, see: http://www.michaeleisen.org/blog/?p=1825 http://www.michaeleisen.org/blog/?p=1825 I have personally talked to a student at the Broad Institute who told me a number of people there do not agree with the Broad positions (namely the Cell article and Lander's statements). Disclaimer: Also a graduate student at UC Berkeley (not in Bio).