There is no shortage of surprises and twists in the decade-long fight over the control of dominant IP in the CRISPR space.  The newest one is the self-revocation of two seminal CRISPR patents in Europe by the team led by two Nobel Laureates Emmanuelle Charpentier and Jennifer Doudna (aka “CVC”).  This extraordinary move creates additional uncertainty for companies in the gene editing space trying to navigate the highly complex CRISPR IP landscape and for companies already paying exorbitant licensee fees to these dominant patents in order to secure market exclusivity. 

Read the full post on Proskauer’s Minding Your Business blog.

Posted in Intellectual Property, Life Sciences, Patent Law
Tags: Board of Appeal of the European Patent Office, CRISPR, CRISPR patents, CRISPR technology, European Patent Office (EPO), European Patents, Intellectual Property, Patent Law
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Photo of Fangli Chen Fangli Chen

Dr. Fangli Chen is a partner in the Litigation Department and chair of the Life Sciences Patent Practice. She represents all types of companies in the biotech and pharmaceutical industries, and has deep scientific expertise and a strong business sense. Fangli effectively identifies…

Dr. Fangli Chen is a partner in the Litigation Department and chair of the Life Sciences Patent Practice. She represents all types of companies in the biotech and pharmaceutical industries, and has deep scientific expertise and a strong business sense. Fangli effectively identifies and transforms technological developments into valuable intellectual property assets for her clients and specializes in the strategic development of complex IP portfolios for companies that align with their business goals.

Fangli’s practice also focuses on post-grant review before the USPTO, oppositions, pre-litigation and litigation strategy, due diligence investigations, freedom-to-operate, non-infringement and invalidity analysis, licensing and other IP matters in connection with commercial transactions. She handles a variety of technology areas including biochemistry, molecular and cell biology, immunotherapy, enzyme replacement therapy, nucleic acid based technologies including messenger RNA therapy, gene therapy, gene editing, antisense and oligonucleotides based therapies, vaccines, bioinformatics, and small molecule compound drugs.

Fangli also has a wealth of experience in the following areas:

  • Post-grant challenges: representing clients in inter partes review interference and various foreign opposition proceedings.
  • Technology transactions & licensing: advising clients on matters relating to technology or material transfer, licensing and research collaborations.
  • Investment or acquisition counsel: assisting investors in assessing the technology and intellectual property assets and risks for potential target investments and counseling companies on intellectual property matters in connection with public offering or acquisition.

Fangli has been repeatedly noted for her top-tier work by industry publications, including being listed as a World’s Leading Patent Practitioner by IAM Patent 1000 and recognized as one of the Top 250 Women in IP nationwide by Managing Intellectual Property. In 2019, she was named Patent Strategy & Management Attorney of the Year in Massachusetts by LMG Life Sciences. She has also been recognized by Best Lawyers in America, Client Choice, Legal 500, Massachusetts Lawyers Weekly and Massachusetts Super Lawyers. Prior to joining Proskauer, Fangli was a partner at a leading Boston law firm.

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Photo of Nicholas C. Prairie Nicholas C. Prairie

Nicholas (“Nick”) Prairie is an associate in the Litigation Department, and a member of the Life Sciences Patent practice. He works with life science and pharmaceutical clients of all sizes and counsels through the life cycle of U.S. and foreign patent assets.

Nick…

Nicholas (“Nick”) Prairie is an associate in the Litigation Department, and a member of the Life Sciences Patent practice. He works with life science and pharmaceutical clients of all sizes and counsels through the life cycle of U.S. and foreign patent assets.

Nick is experienced at conducting freedom-to-operate and patentability analyses to identify opportunities in crowded therapeutic fields, as well as developing and implementing prosecution strategies to support commercial efforts. He has prepared non-infringement and invalidity opinions, evaluated litigation risk, and developed potential litigation strategies. He has conducted infringement analyses and has prepared complaints for federal district courts and the International Trade Commission. Nick is also heavily involved in supporting opposition practice in Europe, on the sides of both Opponents and Patentees.

Nick’s technical expertise is diverse. While trained as a synthetic organic chemist, he works with an array of therapeutics in the chemistry space, including small molecules, macrolides, and multifunctional molecules, as well as therapeutics in the biotechnology space including antibodies, enzyme replacement therapies, engineered cells, nucleic acid-based therapies, and gene editing technologies. Prior to joining Proskauer, Nick was an associate at another Boston firm where he assisted in patent prosecution and district court litigation.

Before law school, he worked for about eight years as a chemist where he designed and synthesized a variety of pharmaceutically interesting compounds including; small molecules, peptides, peptide-drug conjugates, proteins, and protein-polymer conjugates, and is an inventor on several patents/patent applications. As a graduate student his research focused on natural product synthesis. In addition to staying up to date on the ever-shifting patent case law, Nick enjoys spending time with his dog and staying active.

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