CRISPR and the Transatlantic Race to the Patent Office – Ep. 24 [Podcast]

Summary

In this week’s episode of Stuff You Should Know About IP, Thomas Colson and Raymond Guarnieri welcome special guest Patrick von Hinnegan to discuss a CRISPR technology patent case that involves happenings in the United States and in Europe. Most nations in the world, including the US, operate under a first-to-file patent regime, which means that patent rights are awarded to the first party to file a patent application for a new technology, even if that party was not the first to invent the technology. In the US, an inventor can file a provisional patent application – which isn’t a real patent application, but is instead more of a placeholder for one – to obtain an earlier priority date, which is valuable for obtaining patent protection because nothing published after that date can be used to reject or invalidate a patent. A provisional application from the US can be used by a party to obtain a patent in another country. If a party files a subsequent provisional application that adds new information, and then the party includes information from each provisional application in the non-provisional application, the priority date would be the date that the most recent provisional application was filed. In this case involving the CRISPR technology, twelve provisional applications were filed, and applicants sought the earliest provisional date as their date of priority for a European patent. Initially, the patent was granted, but another party filed an opposition to it, and the patent was then invalidated. There are different rules for listing applicants on a US application versus on a European application, and these applicants didn’t follow the European rules when they filed for their European patent. Any inventor who doesn’t understand international rules, but who plans to file internationally, should consult with a knowledgeable patent lawyer.

Transcripts

Raymond Guarnieri:

Okay. CRISPR technology is involved in a transatlantic race to the patent office and it appears they may lose that race. We are here today with Patrick von Hinnegan who is a Dutch Patent attorney and of course, Tom Colson to discuss this exciting case. This is stuff you should know about IP.

Raymond Guarnieri:

Tom, Patrick, please kick us off because this is where we start to go way over my head with IP, so.

Thomas Colson:

Okay, yeah. And there’s probably let me just frame it first, because this is arguably some really boring stuff, okay. And we don’t want to bore people on this podcast, but it’s interesting to a few people that understand the subtleties of IP law. Patrick’s one of those. But it’s really important.

Thomas Colson:

And let me just kind of frame it. And that is all over the world, there is this thing going on called a race to the patent office. In the US there used to be a rule that was, it doesn’t matter who gets to the patent office first, it matters who invent something first to determine who will get patent protection, who will get ownership of these patent rights.

Thomas Colson:

But in like 2013, I think-ish around the America invents act, we switched from a first to invent rule to a first-to-file rule, which conforms to the rest of the world. So now it’s truly a race to the patent office. If you get there first with somebody who invented, maybe before you, you still get the patent rights.

Thomas Colson:

So dates are everything in patent law. The earlier you can get your patent application filed the better your chances of having patent rights. Now, there is this thing in the US that was created a long time ago, a couple of decades ago called a provisional patent application.

Thomas Colson:

Now again, this is some boring stuff, but let me just give you some quick background. A provisional patent application isn’t a real patent application. It’s kind of a quasi patent application. It’s more of a placeholder. Essentially, you can file something that’s not quite a patent application in the US and you get 12 months to convert it to a real non-provisional patent application. And if you can do that within 12 months, you can get the date all the way back to your initial provisional patent application as your filing date.

Thomas Colson:

And again, dates are everything because it’s a race to the patent office. And here’s the risk though. You file a provisional patent application, and then you start publishing your invention to try to sell it. You make offers for sale, or you want to be famous. So you publish a paper about it, and then you can convert it to a real patent application.

Thomas Colson:

The problem that is you lose your priority date and you’ve already published. And once you’ve published, you can’t get a patent application or you can’t get a patent. So it’s really important to file just the right provisional application, that you’ll be able to convert to a real patent application and non-provisional application within a year so that you can relate all the way back to that initial date. Essentially keep your date.

Thomas Colson:

Now, when you’re talking about crossing the Atlantic and having a European patent application, that’s going to relate back to your original US provisional application, we’re getting complicated. But it’s important. Why? Because if I want to get a Dutch patent and I want the earliest possible date, I’m going to want to have that date go all the way back to my initial filing of my US provisional patent application. And if I do it right, I can do that.

Thomas Colson:

So instead of having a date of January 1st, 2020, and by the way, we’re way past that. But let’s say January 1st, 2020, I could go all the way back to January 1st, maybe 2019. And the reason that’s so important is because there might be publications by me or by others about my invention after the January 1st, 2019 date that I need to get behind in order to get patent protection.

Thomas Colson:

So you’ve got to be very careful to file all the right rules when it goes from using that provisional application for your priority date. Now, Ray, is that sort of clear what I’m saying?

Patrick von Hinnegan:

Ray you are muted.

Thomas Colson:

Yeah. You were muted Ray, but we, yeah-

Raymond Guarnieri:

Yes but I would probably several times over before I fully understood

Thomas Colson:

Okay but fundamentally, the key thing is getting your earliest possible filing date, using a provisional patent application to get your place held in line so that anything that’s published after that just doesn’t impact you. Then being able to convert that provisional into a US patent or a Dutch patent and use the original filing date. So Patrick, did I explain that well?

Patrick von Hinnegan:

I have nothing to add. To me it’s perfect.

Thomas Colson:

Okay. So tell us, Patrick, there’s this CRISPR technology, and it really doesn’t matter what the technology is because that’s not really the point of this podcast, but there’s this US CRISPR technology and they tried to get a Dutch patent, and what happened?

Patrick von Hinnegan:

Well, I can either try to get a European patent, but it doesn’t really matter for the story.

Thomas Colson:

Yep, okay.

Patrick von Hinnegan:

So you have to file as soon as possible, right? Because you don’t know, there is a race between two universities or two research groups, and they are working on same thing. Now in times of COVID, everybody’s working on the same vaccine. So as soon as you find something, you want to get the date because you have to get the date at the patent office first and only then you can publish, only then you can sell it.

Patrick von Hinnegan:

So, yeah, it really is a race to the patent office. And what happened in the CRISPR case is that they found something. And then a few weeks later they found something and then a few weeks later, again, they found something. And then a few weeks later, again, they found something, so they filed 12 provisional patent applications in the US. 12. I had never seen it myself.

Thomas Colson:

So every time they found something, they quickly file a provisional.

Patrick von Hinnegan:

Yes.

Thomas Colson:

So have you ever seen 12 filed on the same thing before?

Patrick von Hinnegan:

I have never seen 12. I have seen two or three but 12 really was new for me.

Thomas Colson:

So what happened then?

Patrick von Hinnegan:

So what happened is, well, it’s very well possible to claim priority of set of multiple provisional patent applications or non-professional patent applications. It doesn’t matter as long as it’s within the 12 months.

Patrick von Hinnegan:

So you have the first provisional patent application and within 12 months you have to file the final patent application. And in this case it was a PCT application, but it can be a US non-provisional patent application. It can be a European patent application doesn’t matter. And then-

Thomas Colson:

So the provisional in the US can be used as your date for a European patent application?

Patrick von Hinnegan:

Yes.

Thomas Colson:

So it can be laid back, even though it wasn’t filed provisionally in Europe, which I don’t even think you have provisionals in Europe, but you can use it in the US. Okay. But they filed one every couple of weeks or so. So do you, do you relate back to all of them or the earliest? How does that work?

Patrick von Hinnegan:

Essentially, you relate back to all of them and for what you filed at the first date, you get the date of the first date. And then if you added something a few weeks later, you do not get the first date, but you get the second date because, because that’s the moment you first wrote it down. And if you then add something a few months later, if that’s the first moment you wrote it down, you get that date.

Thomas Colson:

Okay. So fundamentally with a provisional, the only way you can relate back to that date is if you don’t add any new information or new innovation into your final patent application. So for example, if I file a provisional patent application on January 1st, 2019, and then I file my non-provisional within a year. So let’s say December 1st, 2020, I can get that date as long as I haven’t added any new information in my final patent application.

Thomas Colson:

Let me give a really stupid example. Okay. I invented chair and my provisional describes a chair with a back, a seat, four legs and two armrests. And then during that year, I filed my non-provisional application and I include a foot rest, or I include a headrest. I cannot get the date of the original provisional with respect to the headrest and the foot rest component of that new patent application. Correct?

Patrick von Hinnegan:

You’re absolutely right.

Thomas Colson:

Okay. So if in the first provisional, I file a chair with the a back, a seat, four legs and two armrests. Two weeks later, I file another provisional application with a headrest. Two weeks later, I filed another patent with provisional, with a foot rest. I now have three provisionals.

Thomas Colson:

Then within a year, let’s say six months later, so we’re not even close to the deadline. With six months later, I file a patent application wherever for a chair, with a seat, a back, two armrests, a headrest and foot rest. Which provisional date would I get?

Patrick von Hinnegan:

The last one.

Thomas Colson:

The last one? Okay.

Patrick von Hinnegan:

That’s the first time you wrote down all three components.

Thomas Colson:

Okay, brilliant. Perfect. So in this case, it’s way more complicated than a chair, of course. Right? I mean, it’s CRISPR technology and by the way, totally over my head, but-

Patrick von Hinnegan:

And mine as well.

Thomas Colson:

Probably what Patrick said. Patrick totally gets it, but they did 12 patent applications. So they did the headrest, the foot rest, the laser beams that shoot out of the armrest, the video monitor, they did everything that kept adding as they discovered new stuff around CRISPR. Right?

Thomas Colson:

So when they finally tried to file in Europe, they were probably picking the date of the last of the 12 provisionals to get back to. Right?

Patrick von Hinnegan:

No, they wanted the first date.

Thomas Colson:

Oh, the original date, even though they added new stuff.

Patrick von Hinnegan:

Yeah. And then you have four different kinds of subject matter, we have different dates.

Thomas Colson:

Oh, okay. One patent application, you can have multiple dates depending upon what you’ve claimed.

Patrick von Hinnegan:

Yes.

Thomas Colson:

So claim one to the basic chair with the back, the armrest and the legs, that’s one day. The date with the head rest is, even though it’s claimed in the same patent application, it gets a separate date.

Patrick von Hinnegan:

Yes.

Thomas Colson:

So one patent application can have multiple priority dates.

Patrick von Hinnegan:

Yes.

Thomas Colson:

That’s complicated, Patrick.

Patrick von Hinnegan:

It is, it is. It takes a few years of school to understand.

Thomas Colson:

Especially, if you want to litigate it downstream.

Patrick von Hinnegan:

Yes.

Thomas Colson:

Yeah. Okay. So what happened? What happened in this case?

Patrick von Hinnegan:

So what happened is that there is this regulation in the US and there is this regulation in Europe and they are not the same. I think every patent professional acting on a global scale knows that the rules are not the same everywhere.

Patrick von Hinnegan:

And in the US, you have these professional patent applications and they were filed by several people to make it even more complicated. So-

Thomas Colson:

So the different inventors all along the way.

Patrick von Hinnegan:

Yes.

Thomas Colson:

So Ray invents the chair with the back, the seat that feet, the legs and the arm rest. But then Patrick comes up with the head rest three weeks later. And then I come up with the foot rest. There’s all three different adventures in each provisional.

Patrick von Hinnegan:

Yeah, yeah.

Thomas Colson:

That happened here.

Patrick von Hinnegan:

That happened here. And that’s where the problem was because according to the European rules and articles of the European patent law, if you want to validly claim priority, the subject matter has to be disclosed in the priority application. So the US provisional patent application, and there is this, this bunch of formality rules so to say.

Patrick von Hinnegan:

And one of these formality rules is that you should claim priority within 12 months. We all know that. And one of the other more formality regulations is that it should be filed by the same person, by any person. And this is sort of understandable because Tom, if you and I invent today, an approved chair and we filed a us provisional patent application for it, we get into a fight in six months time.

Patrick von Hinnegan:

And one year from now, I want to go along with a patent application without telling you. And I want to have all the revenue of it. I file it in my own name and I do not file it in your name.

Thomas Colson:

Yes, yes. So you essentially steal my rights.

Patrick von Hinnegan:

Yes.

Thomas Colson:

Right.

Patrick von Hinnegan:

And that’s not allowed. So the people filing the patent application in Europe, they must be the same as the people filing the patent application in the US. But in this case, there were four or five different inventors who were also named as an applicant, because according to the old American rules, this was the convention.

Patrick von Hinnegan:

And then when they went to Europe, they said, well, one of them, he invented the headrest, but he did not invent the chair. And we want only protection for the chair. So we are not going to name him as an inventor. And also not as an applicant, but because on the original US professional patent application, he was mentioned as an applicant, not only as an inventor, but also as an applicant, he had to belong there for the European rules.

Thomas Colson:

Right. Right. So, so there’s still the… and eventually there was a fight, right? I mean, there was a big fight and I think I just skimmed it. And I think the people that wanted the patent application for this CRISPR technology, they appealed the decision because they didn’t get priority in the lower court. And because there was already publications. Oh, go ahead.

Patrick von Hinnegan:

No, it’s a bit more complicated again.

Thomas Colson:

Okay, lets hear it Patrick.

Patrick von Hinnegan:

So initially, the patent was granted.

Thomas Colson:

Okay. And then it was opposed.

Patrick von Hinnegan:

Because in the European patent office, they don’t really check whether the priority is valid.

Thomas Colson:

Gotcha. Okay.

Patrick von Hinnegan:

And then only people wanted to use the technology without having to pay for a license fee. And then they filed an opposition against the granted patent.

Thomas Colson:

Yeah because what’s happening then is there’s a patent and it’s a really good technology. And a lot of people want to use it. So they hire expensive lawyers to figure out if there’s a way to invalidate that patent. Right?

Patrick von Hinnegan:

Yes.

Thomas Colson:

They hire guys like you Patrick, or guys like me to go out there and figure out if there’s any technical defects that might invalidate the patent, because a granted patent that’s invalidated isn’t the patent anymore. Right?

Thomas Colson:

So if they can invalidate it, they can freely use the technology. Right?

Patrick von Hinnegan:

Yes.

Thomas Colson:

They hired guys like us to go out there and invalidate that patent-

Patrick von Hinnegan:

Yes.

Thomas Colson:

…And we won. And the patent was essentially invalidated. Right?

Patrick von Hinnegan:

Yes.

Thomas Colson:

But then it went up to the higher court and that case just came down recently, you sent me the link and I skimmed it. And the appellant’s argument, the person who wanted to get the patent, wanted the priority date. They’re basically saying, look the property right, it’s not your thing to determine. That’s between us.

Thomas Colson:

We will fight about that in the US. We’re talking about the patent itself. That is for you to determine, and you really the property right, that’s none of your business. We will worry about that. You worry about whether the patent itself should be granted. We’ll worry about who owns it, right?

Patrick von Hinnegan:

Yes. That’s what they said.

Thomas Colson:

That’s essentially the argument. And what did the upper court say?

Patrick von Hinnegan:

Well, the upper court essentially said, you should have done that before you filed in Europe. You should have done it before and not afterwards. And there are these regulations and they have been there since 1973, when the European patent convention was established. And everyone knows that. And even though it’s a formality, it’s also a formality that you have to pay an initial fee when the patent.

Thomas Colson:

Right.

Patrick von Hinnegan:

Don’t pay the agent fee, there will be no patent.

Thomas Colson:

Right.

Patrick von Hinnegan:

And if there is this formality that you cannot file a patent application, which is not yours to file because you are not entitled to file because not all the applicants are on there, even though it’s a formality, yeah, we do not want a system in which anyone can file a patent application if the priority application is filed by several people because then we don’t know what’s going on anymore. And-

Thomas Colson:

Essentially they didn’t follow the rules. And the rules are well-known to people who are experts in this field. And I think what they also said is if you had granted title, if the person who was left off had assigned their rights, we’d be okay.

Patrick von Hinnegan:

Definitely, definitely.

Thomas Colson:

Right? So essentially you didn’t follow the rules, which everybody’s aware of and you didn’t follow them. So you’re out of luck. And the reason when you described this Patrick, the reason Ray and Tom really wanted to include you is because lawyers need to know this, right?

Patrick von Hinnegan:

Yeah, yeah.

Thomas Colson:

I mean, especially today when everything’s international, I mean, even the smallest companies out there when they file, they’ve got to have an international strategy. And if you’re dealing with provisionals, which by the way are dangerous anyway, right? For a whole bunch of different reasons, provisional applications are dangerous because people file them to Willy nilly and they don’t think enough about what they need in them to get the non-provisional granted in the future.

Thomas Colson:

And now when you’re talking about crossing the Pacific or crossing the Atlantic, you got to be careful that you’re following the rules. And if you don’t know the rules, call someone who does, right?

Patrick von Hinnegan:

You’re a hundred percent, right. And you’re a hundred percent. Right.

Thomas Colson:

Yes.

Patrick von Hinnegan:

And I think you just talked about hiring expensive lawyers to get the patent invalidated. I think also if you want to have patents, you can also call an expensive lawyer, but he-

Thomas Colson:

Yeah, exactly.

Patrick von Hinnegan:

… He needs to know what’s going on. Not only in the US not only in Europe, but in every country and you and myself, we have experienced working in all countries. So we know what the regulations are and we know how to follow them. And we can help people not filing patents which will be at the end evaluated.

Thomas Colson:

You are. So, right. In fact, I have been a patent lawyer long enough to have seen sadly, I wish I was a lot younger, but I’m not. But I’ve been a patent lawyer long enough to have seen the transition between the small town patent lawyer that will handle any little invention and just get it in the US because I’m in the US. But that person is no longer relevant because it’s no longer just about one country.

Thomas Colson:

You can’t have a lawyer that’s really an expert at Dutch patent law, because all that a patent does is give you the right to exclude others from making, using, selling, and offering for sale in the country of the patent.

Thomas Colson:

So if you’re a Dutch patent lawyer and your attitude is, Oh, I’m great at Dutch patent law, I can file and get you a Dutch patent every day. But you’re only going to be able to prevent competitors in the Netherlands.

Patrick von Hinnegan:

You are right. Business very soon.

Thomas Colson:

Yeah, that’s a very small market relative to the world, right? So these days, I love the way you put that. Patrick, it’s not just about hiring an expensive lawyer to invalidate. You need to hire the expensive lawyer from the moment you can see if your idea, because that’s when it starts.

Thomas Colson:

That’s when the race to the patent office starts. And if you don’t do the right stuff upfront with your little tiny provisional patent application, you’re going to lose your rights all over the world. And then you’re going to start offering for sale. Then you’re going to start publishing thinking, Oh, I’m good because I have this provisional that was filed by this farm town lawyer of mine.

Thomas Colson:

No, you got to hire the good lawyer today right when you have that initial idea. That’s our message right, Patrick?

Patrick von Hinnegan:

Yes, yes.

Thomas Colson:

Hire us now before you have to hire us later to fix your problem, right?

Patrick von Hinnegan:

Let’s end it at that.

Thomas Colson:

Yeah, lets end it at that. Let Ray take us away. You got to unmute first though Ray.

Raymond Guarnieri:

I forgot. I was trying to prevent the echo. No, I was just joking that, do we need to put a disclaimer on this? We got into legal advertising now, or ?

Thomas Colson:

We are giving sound common sense.

Raymond Guarnieri:

Yeah, I, no, I appreciate Patrick you coming on to discuss this case with us because, well, I agree. It’s something that I never would have guessed. I mean, not even being a lawyer, but other lawyers, other IP lawyers need to know about this and-

Thomas Colson:

Here’s what I am thinking Ray. I am thinking Patrick is going to be a useful partner to executive IP because we could do some training videos on IP that are kind of laws that people who do international patenting need to know.

Raymond Guarnieri:

Right.

Thomas Colson:

And Patrick is a really great expert on that sort of thing. So we could have Patrick be a consultant or even go on camera. Once the world opens up again, we can have him in our studios in Buffalo.

Raymond Guarnieri:

Yeah.

Thomas Colson:

He can do a whole series with Patrick as the star. So people who are probably sick of looking at me on camera can see a better looking guy, give the same kind of information. Right?

Thomas Colson:

And secondly, with the Colson Law Group, because we have a lot of clients in the Colson Law Group that do international filing, and it would be really useful to have a collaboration with Patrick who is really an expert at certainly Dutch law.

Thomas Colson:

And certainly soon to be, you’ll be an EU patent lawyer as well. Right Patrick?

Patrick von Hinnegan:

Yeah, yeah. Sure.

Raymond Guarnieri:

Yeah, well-

Patrick von Hinnegan:

I would be very happy to help and I don’t want patents to be invalidated based on formalities, not when they are patents written by myself or by my office. But if you look on it, if I can win the case, sure, I want to but if you look at it as an outsider, I don’t want patents to be invalidated based on formalities.

Thomas Colson:

Yeah.

Raymond Guarnieri:

Mm-hmm (affirmative).

Patrick von Hinnegan:

And I want to spread the word, what are the formalities in Europe? And what should you think of if you are based in China, in Korea, in Japan, in the US, no matter where, and you want to have patent protection. In the end in Europe, what should you think about after filing that first filing that the US provisional or the Chinese provisional or the Dutch provisional, what should you think about to follow all the rules?

Patrick von Hinnegan:

And I will be very happy to consult with you and to help you and to go on camera to talk about things to think of when you consider entering the Europe.

Thomas Colson:

And you know, what’s the great thing about the Patrick, Tom and Ray combo is, yeah, we don’t want patents to be invalidated on technicalities, but if you’re a client and you need us to do that to somebody else’s patent, we know how to do it.

Patrick von Hinnegan:

Yeah, yeah.

Thomas Colson:

All right, Ray, are we done?

Raymond Guarnieri:

Yeah. Patrick, thank you so much for coming on the show. We really appreciate it. And for anyone out there, whether you’re a patent lawyer or patent professional, IP professional, or an innovator, if you enjoyed learning some more stuff you should know about IP, and this is really some stuff you should know about IP, please like, comment, share your comments.

Raymond Guarnieri:

That’s what we want to, we want to know what you really think of this. So share your thoughts in the comment box, and don’t forget to share and hit the subscribe button if you’re on YouTube. Thanks for joining everyone. The stuff you should know about IP. Bye.