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In Regents of the University of California v. Broad Institute, Inc., Patent Interference No. 106,115, Paper 2915 (P.T.A.B. Mar. 26, 2026), the Patent Trial and Appeal Board (“Board”), on remand from the Federal Circuit, reaffirmed that the Broad Institute, Inc., Massachusetts Institute of Technology, and President and Fellows of Harvard College (“Broad”) have priority over The Regents of the University of California, University of Vienna, and Emmanuelle Charpentier (“CVC”) with respect to a single-RNA CRISPR-Cas9 system that functions in eukaryotic cells.
Because both parties filed their applications before the America Invents Act, priority was governed by first-to-invent principles. In an interference, the first party to reduce the invention to practice prevails unless the later party proves an earlier conception and diligence from the date of the first party’s reduction to practice to the date of its own. The Board had previously held that CVC was not entitled to the benefit of its first two applications because they did not provide evidence of conception of the invention, and that Broad had filed the earliest application with conception. The Federal Circuit remanded on May 12, 2025, instructing the Board to apply a proper conception standard and to reconsider whether a person of ordinary skill could have reduced the invention to practice without extensive experimentation.
On remand, the Board reconsidered conception under the “definite and permanent idea of the complete and operative invention” standard. It concluded that, in the relevant art, adapting CRISPR-Cas9 is not routine or predictable, given technical uncertainty surrounding cellular compatibility, guide RNA functionality, and nuclear delivery mechanisms. The Board found that Broad demonstrated a successful reduction to practice in eukaryotic systems, while CVC’s evidence reflected only ongoing research efforts.
The Board accordingly determined, among other things, that CVC’s involved claims are unpatentable under 35 U.S.C. § 102(g), entering judgment against CVC. However, the overall case is still ongoing, as CVC filed a notice of appeal to the Federal Circuit in May 2026.
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