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Skilled in the Art: Neither Snow Nor Rain Nor Government Shutdowns

18 January 2018

The federal government may or may not suspend operations at midnight tonight, but the US Patent and Trademark Office will be running at full strength Monday morning rain or shine. This is one of those times that it helps to be self-funded by user fees.

“Should such a lapse [in operations] occur, the USPTO would still have access to prior year fee collections, which enables the agency to continue normal operations for a few weeks,” Commerce Secretary Wilbur Ross said in a statement broadcast to the agency. “USPTO employees should report to work as normal until and unless you receive notice otherwise.”

Practitioners who remember the disruption caused by a lengthy 2015 power outage ought to be relieved to hear this.

PTO interim director Joe Matal followed up with a slightly more cautionary email. While it will be business as usual “for now and the near future,” the PTO will “continue to assess our fee collections compared to our operating requirements to determine how long we should be able to operate during a government shutdown.

“Should we exhaust these funds before a government shutdown comes to an end, the USPTO would have to shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.”

Europe Frowns on CRISPR Patent, But It’s Still Early

Is it a game-changer or just a bump in the road? That’s the question I had when I learned that the European Patent Office has revoked a patent on CRISPR gene editing technology held by the Broad Institute.

The EPO’s Opposition Division ruled last week the Broad’s EP 2771468 cannot claim priority to a 2012 U.S. Patent application. That means the ’468, and likely several other Broad patents facing similar EPO opposition proceedings, could be antedated by European patents held by the University of California and other researchers.

The problem for the Broad Institute is that its U.S. patent application lists an additional co-inventor from another university who was omitted on its subsequent European patent application. That variation wouldn’t trip up a U.S. patent’s priority date, but the European Patent Office plays by different rules.

The Broad Institute, which is part of Harvard and MIT, brushed off the ruling as “a technical formality” that is “unrelated to the substantive merits of the CRISPR patent.” It promised an appeal to the EPO’s Technical Board of Appeal, and has lined up experts such as former Federal Circuit Chief Judge Paul Michel and former WIPO Deputy Director Jim Pooley to argue that the ruling is out of step with the Paris Convention for the Protection of Industrial Property.

I took an unscientific poll of two life science IP attorneys who aren’t involved in the case but who like so many are watching it closely.

Brian Nolan of Mayer Brown said it’s a bit disingenuous to call the ruling a technicality. “It’s a technicality that could be the death knell for the patents that have that defect,” he said. If the ruling is upheld on appeal,it might weaken the Broad’s European IP protection, but probably won’t eliminate it entirely, he said. “It’s more than just this one patent” with the inventorship problem. “It’s not all of them.”

Michael Stramiello of Paul Hastings says we’re still in the early innings of CRISPR IP battles. The Broad’s appeal will probably take a couple of years. Though CRISPR technology is evolving, a lot of companies are taking licenses from both the Broad and the UC sides. “I’d probably expect that to continue as we see this play out,” he said.

In the United States, the University of California, the University of Vienna and researcher Emmanuelle Charpentier argue that the Patent Trial and Appeal Board should have found the Broad’s U.S. patents obvious during an interference proceeding. The Federal Circuit is expected to hear argument later this year.

Fun fact: The Broad rolled out an Oil States argument in its Federal Circuit brief last month. If the Supreme Court rules that IPRs and reexaminations and interferences are all unconstitutional—don’t snort, Justice Neil Gorsuch floated that possibility at oral argument—then the Broad wants its day in an Article III court.

Grant & Eisenhofer Bets on IP

Known mostly for its shareholder and corporate governance litigation, Grant & Eisenhofer is launching a dedicated IP practice, my ALM colleague Scott Flaherty reports. The firm has brought patent litigator Eric Evain in from Reed Smith to head the new group.

“Eric’s strong background as a scientist who holds a number of his own chemical-related patents makes him additionally qualified in understanding the technical aspects of complex patent cases,” firm leaders Stuart Grant and Jay Eisenhofer said in a statement.

Evain will be based at the firm’s Wilmington, Delaware office. He told Flaherty he was attracted by the opportunity to start a new practice group—and to pursue cases on a contingency fee basis.

We Just Read It for the Cultural Commentary

Durie Tangri and the Electronic Frontier Foundation have swooped in to defend website Boing Boing from a copyright suit filed two months ago by Playboy Entertainment Group Inc. In a motion to dismiss signed by Durie Tangri’s Joseph Gratz, Boing Boing says it’s “mystified” by the suit because it merely alleges that Boing Boing provided hyperlinks to third-party collections of all the Playboy centerfolds ever published.

Playboy, which is represented by Doniger Burroughs, alleges that Boing Boing induced copyright infringement. The complaint notes that Boing Boing praised the “wonderful person” who made the images available on That’s evidence of Boing Boing’s “intention to promote the infringement,” Playboy says.

Boing Boing makes a persuasive case that the Supreme Court and Ninth Circuit have already decided this issue against content holders such as Playboy. Things get a little shaky, though, when Boing Boing argues in the alternative that Boing Boing’s links were a fair use.

Boing Boing’s post had observed that by lining up all of the centerfolds from 1953 to 2016, it’s “kind of amazing to see how our standards of hotness, and the art of commercial erotic photography, have changed over time.” Thus, Gratz writes, “Boing Boing’s use was for the classic fair use purposes of commentary and reporting.”

If you’re clicking through the above links to find the centerfolds, don’t bother. They’ve been taken down from imgur and YouTube by their users. Gratz surmises that Playboy served them with DMCA takedown notices, which he writes is the proper approach for removing infringing content.


Reprinted with permission from the January 19, 2018 edition of © 2018 ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited.

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