Synthego has prevailed in its intellectual property dispute with Agilent Technologies. The row led to the invalidation of two Agilent patents related to guide RNA, leading Synthego to hail the ruling as a victory “for the entire CRISPR-enabled research and therapeutics field.” Agilent will appeal the decision.
Agilent filed for the patents, US10900034 and US10337001B2, in 2015 and 2017. In the case it made to the U.S. Patent Trial and Appeal Board (PTAB), Synthego, a genome engineering company, argued that the claims made by Agilent are unpatentable, pointing to a patent (PDF) held by plant seed producer Pioneer Hi-Bred to make its case.
The PTAB sided with Synthego. In two final written decisions, the board concluded that 33 claims related to the ‘034 patent and 30 claims related to the ‘001 patent are unpatentable. The decisions reflect the belief that other groups performed certain chemical modifications to RNA sequences to achieve benefits including increased resistance to nuclease degradation before Agilent filed for patents on its technique.
“This decision by the PTAB is a major victory for the entire CRISPR-enabled research and therapeutics field," Paul Dabrowski, CEO of Synthego, said in a statement. “The ruling confirms that the invalidated Agilent patents attempted to claim well-known modifications to guide RNAs already taught by prior art. It is a win for researchers and, ultimately, for patients.”
Agilent "respectfully disagrees" with the ruling. "Prior to the work done by Agilent’s inventors, it was not known whether the many chemical modifications Agilent made to the various and long guide RNAs would disrupt functionality of the gRNA:Cas enzyme complex. That answer was discovered and disclosed by the Agilent inventors as a multidisciplinary team and using Agilent’s own patented chemical synthesis methods," the company wrote in a statement.
The case is part of a series of intellectual disputes involving CRISPR that date back to the early days of the genome editing technology. Synthego has built a business around the science, offering services such as the synthesis of guide RNAs that are compatible with different CRISPR nucleases.
Agilent also makes guide RNAs for CRISPR research and has worked to build intellectual property related to the business. In addition to ‘034 and ‘001, the life sciences business has US10767175, a technique for high specificity genome editing using chemically modified guide RNAs that was outside of the scope of the PTAB case.