Opinion: How to Avoid Legal Problems in Collaborative Research

The path from the discovery of the CRISPR/Cas mechanism as part of bacteria’s adaptive immune system to the use of this pathway in the food industry and later as a breakthrough gene-editing tool is a good illustration of the power of collaboration among scientists across disciplines. Yet CRISPR’s development also serves as a salient warning of how failing to assign clear and up-front ownership of intellectual property (IP) can result in prolonged and costly legal friction.

The Scientist Magazine

That Other CRISPR Patent Dispute

Normally, if an inventor believed he or she was left off a patent, he or she could raise the issue in the patent office or federal court and appeal to have it added, explained Dan Burk of the University of California, Irvine, School of Law. Yet, for reasons that are unclear, the university didn’t go this route. “It’s hard to tell what [Rockefeller] wanted to accomplish,” said Burk.

If the patent application move by Rockefeller isn’t unusual enough, there’s this: the Broad alleges that the university filed the application without ever telling the institute.

In a letter sent to the USPTO in August 2014, Ellen Law, a lawyer representing the Broad, wrote that the institute had nothing to do with Rockefeller’s application. “The present application was NOT FILED WITH ANY NOTICE to Feng Zhang, the Broad or MIT prior to its filing,” she wrote (emphasis Law’s), adding that the Broad’s position maintained that Marraffini was not an inventor of the described technology.

The Scientist Magazine