Precision BioSciences, Inc., today announced that the United States Patent and Trademark Office (PTO) has now issued Actions Closing Prosecution in the reexamination proceedings for both U.S. Pat. No. 6,610,545 ("the '545 patent") and U.S. Pat. No. 7,309,605 ("the '605 patent") that are owned by the Institut Pasteur and the Universite Pierre et Marie Curie (UPMC), and licensed to Cellectis, SA (ALCLS). The '545 patent and the '605 patent are the two patents asserted against Precision in litigation filed in March 2008 by Cellectis, but the PTO has now twice rejected all claims asserted against Precision in the litigation. Significantly, during the course of the reexaminations, the patent owners have filed amendments to each of the original independent claims asserted in the litigation in an effort to overcome the PTO's rejections. The Actions Closing Prosecution are designated "non-final" because the patent owners have the right to file comments in an effort to persuade the patent examiners to reconsider the rejections and re-open prosecution. If the examiners maintain the rejections, the rejections will be made "final," and can be appealed to the PTO's Board of Patent Appeals and Interferences.
“The fact that the patent owners have sought to amend the asserted claims itself, we believe, suggests that the original claims are invalid, and is, in any case, a futile attempt to salvage the patent claims.”
"We believe it is clear that Precision BioSciences' DNE technology doesn't infringe any of the claims of the '545 patent or the '605 patent. In fact, the DNE technology was developed to avoid the need for prior insertion of a cleavage site into a genome, or reliance on the exceedingly rare and random occurrence of a cleavage site at a desired site in a genome. We believe methods requiring such prior insertion of a cleavage site and reliant on such limited cleavage sites, such as those of the patents asserted by Cellectis, are out-dated," said Jeff Smith, CSO of Precision BioSciences. "In contrast, Precision's advanced DNE technology employs rationally-designed meganucleases which enable us to efficiently target desired endogenous sites in a genome."
"Ever since Cellectis instigated its litigation, we have felt that the asserted claims of the '545 patent and the '605 patent are clearly invalid in view of a variety of prior art references," stated Derek Jantz, VP of Scientific Development at Precision. "The fact that the patent owners have sought to amend the asserted claims itself, we believe, suggests that the original claims are invalid, and is, in any case, a futile attempt to salvage the patent claims."
"Most disturbing in all of this," added Dr. Smith, "is the fact that many of the prior art references which the examiners have used to reject the claims of these patents were known to one or more of the inventors and their attorneys but, in our view, were not properly disclosed to the Patent Office during prosecution of the patents-in-suit. If those references had been properly disclosed, we don't believe that these patents would have issued."
Interested parties can find copies of the PTO's Actions Closing Prosecution at: www.precisionbiosciences.com/news.
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