TOPICS

“Methods and compositions for RNA-dependent targeted DNA modification and RNA-dependent transcriptional regulation”

Overview:

This case pertains to a request to overturn a trial decision finding a request for a patent invalidation trial to be not established. The court dismissed the plaintiff’s request.

▶Summary of Judgement and Link to Full Text (Japanese)

Main Issue:

Whether the present invention can enjoy the benefits of claiming priority based on the first filing under Article 4A of the Paris Convention.

Summary:

Whether or not a priority claim based on the first priority filing under the Paris Convention can be recognized for the present invention should be determined on the basis of not only the claims, but of the matters recognized, when viewed substantively, as being described in all of the first application documents, including the specification. If the present invention is recognized as being an invention that could not be worked by a person skilled in the art even when the disclosures of all of the first application documents are combined with the common technical knowledge of the skilled person as of the priority date, the present invention would not be recognized as being the matters described in all of the first application documents, and the effect of claiming priority under the Paris Convention should not be recognized. Consequently, in order to recognize that the present invention is substantially disclosed in all of the first application documents, it is necessary to recognize that the skilled person could have worked the present invention without requiring excessive trial and error based on the disclosures of all of the first application documents as well as the common technical knowledge as of the priority date for the present invention.

…

As shown above, the first application documents disclose technology for a CRISPR/Cas9 system (a complex of DNA-targeting RNA and a site-specific modifying polypeptide) for site-specifically modifying target DNA, with the aim of providing technology capable of replacing the prior art relating to genetic manipulation, and concretely describes its configuration, a method of preparing the complex and introducing it into cells (including eukaryotic cells), and the mechanism of cleaving the target DNA.

Specifically, the first application documents disclose the technical concept of applying the CRISPR/Cas9 system to the target DNA inside the eukaryotic cell, and these disclosures are sufficient for it to be recognized that the concrete explanation of the present invention has been described so as to enable this technology if combined with the well-known technology as of the priority date.

…

In view of the above, it should be stated, when viewed substantively, that the present invention was disclosed, based on the disclosures of all of the first application documents as well as the common technical knowledge as of the filing date, and since it is noted by this court that the international patent application, which is the subject of the divisional application relating to this patent, was filed within the priority period under Article 4C(1) of the Paris Convention, the present invention is recognized as being eligible to receive the benefits of claiming priority based on the first priority basis application under Article 4A(1) of the Paris Convention.

Comments:

Although the plaintiff asserted that “it cannot be said that the CRISPR/Cas9 system could have been applied to the eukaryotic cell without requiring excessive trial and error based on disclosures in the specification of the first application documents, where the specification not give any examples”, the court did not adopt the plaintiff’s argument, stating that “it is recognized that the present invention has been concretely described sufficiently enough to enable it if combined with the well-known technology as of the priority date for this case, and additionally, the priority claim that treats the priority date as the filing date for the present invention is not precluded, even if there are no examples”.

Kazuyuki YOSHIZUMI