Berkeley’s Ten-Millionth Patent Sandwich

The University of California, Berkeley came up a bit short in snagging the ten-millionth patent issued by the Patent and Trademark Office since it reset its numbering system and awarded U.S. Patent No. 1 to Maine politician and inventor John Ruggles on July 13, 1836.

More accurately, Berkeley came up short and long. Over the past week and a half, it collected U.S. Patent Nos. 9,994,831 and 10,000,722. The PTO awarded U.S. Patent No. 10,000,000 to Raytheon Co. for a laser-detection invention. (The agency started counting patents after it lost nearly 10,000 to an 1836 fire, dating from the first-ever issued patent, a process for making potash, in 1790. Those are called the X-Patents, a few thousand of which were recovered, including X0000001.)

But Berkeley’s team surely cares more about the patents themselves than missing out on getting No. 10,000,000 or the new cover the PTO debuted with it. They’re the first ones on CRISPR gene-editing technology the university’s team has been awarded despite its researchers’ primary role in developing the technology. It had been shut out in the U.S. but has had better success in Europe.

CRISPR (clustered regularly interspaced short palindromic repeats) is about as unrelated to Ruggles’s invention—train wheels with traction to prevent sliding in bad weather—as imaginable. It allows scientists to splice targeted genes and disable or remove them, raising hopes the technology could cure inherited diseases and even cancer. The market for CRISPR applications could reach into the billions.

The ’722 patent, awarded the same day as No. 10,000,000, is based on a 2013 Berkeley CRISPR patent application that’s involved in a high-stakes interference dispute between it and the Broad Institute, a joint venture between MIT and Harvard. After oral argument in April, the Federal Circuit will decide whether the Patent Trial and Appeal Board got it right when it ruled Broad’s patent didn’t overlap with what Berkeley claimed in its application.

It’s not clear how commercially valuable the ’722 patent will be (as opposed to what’s at stake in the Federal Circuit appeal), but “[i]n the end, it’s a good thing for UC Berkeley that a patent issued out of this family,” Mayer Brown intellectual property partner Brian Nolan told me.

“I think you can tell how committed these universities have been with the patenting in Europe and the legal proceedings in the U.S. [and] how important they think this technology is,” he said.

Read my story on Berkeley’s new patents here.

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