•     By Kevin E. Noonan –

    Fyodor  UrnovIdealism is a wonderful and at the same time frustrating character trait, because the world is not ideal as it is and is unlikely to ever be, but the motivation to achieve a more ideal world (or at least a more equitable one) is universal in human cultures (if only as a hope for a better world for our descendants).  A professor at the University of California/Berkeley, Fyodor Urnov (at right), recently expounded on the dream of using CRISPR gene editing to cure disease in a New York Times article and addressed the real-world challenges and obstacles faced in trying to use this breakthrough technology broadly enough for that ideal world to come a bit closer to reality (and for a change the NYT did not invoke patent protection as the all-purpose bogeyman thwarting such more idealistic outcome).

    Dr. Urnov begins his essay with real-life examples of the types of genetic diseases faced by many (albeit a minority) of Americans (that statistical demographic playing a significant role in the story he is telling), in children and young adults, either from birth or in sudden onset or as a ticking timebomb of consequences determined by their faulty genes.  The initial promise of "DNA fixes" was gene therapy beginning in the 1980's, as the fruits of the revolution in molecular biology and the identity of genes responsible for these diseased began to be elucidated.  While there have been some successes in these efforts, the mechanisms for achieving them (usually involving virus-mediated gene insertion into an affected cell or tissue) have been both uncertain and "jaw-droppingly expensive" as Dr. Urnov relates (citing the $3.5 million price tag for Hemgenix, CSL Behring's cure for Hemophilia B).

    An improvement with tremendous promise is CRISPR (which stands for "clustered regularly interspaced short palindromic repeats" in homage to how it was initially found in bacteria).  As Dr. Urnov explains, CRISPR technology can specify repair of a genetic mutation "right where the 'typo' occurs" in an affected gene.  He recites the recent uses of CRISPR technology for providing treatment for congenital blindness, sickle-cell disease, certain heart diseases, nerve disease, cancer, and HIV.  These successes engender in Dr. Urnov the hopeful prospect that CRISPR-based genetic medicine could be achieved in future for a variety of ailments, wherein its genetic specificity could provide directed and tailored cures for many diseases.  His vision for a future child afflicted with genetic disease is that:

    A dedicated CRISPR ‌cures ‌‌center at a university-affiliated hospital . . . takes the diagnosis [of a genetic disease] and morphs it into an order form for a manufacturing facility to create the medication that will repair the faulty gene.  After a month of testing and data review by hospital clinicians and university scientists, the physician does a simple IV injection of the resulting CRISPR medicine, and after a three-day stay at the hospital to confirm‌ the gene editing went according to plan, the child is sent home.

    He cites several examples, in the U.S. and abroad, of CRISPR successes and companies like CRISPR Therapeutics, Vertex, Intellia Therapeutics, and Regeneron who have achieved them in recent years, with other examples of on-going work by other companies.

    But then Dr. Urnov explains the realities that create real impediments to this genetic utopia.  There are 7,000 known genetic diseases (caused by a defect in a single gene) and 400 million people worldwide affected by them.  While he posits a simple experimental path from diagnosis to treatment, he also acknowledges that this would be "only the first step in a four-year journey likely to cost at least $8 million to $10 million."  The first reason for this situation is the regulatory requirements in the U.S. and Europe aimed at "ensur[ing] safety and efficacy of the experimental medicine," Dr. Urnov laying out the time- and money-consuming path from beginning preclinical studies to actually producing the "CRISPR medicine," which itself is subject to well-deserved demanding specifications.  These efforts can cost more than $1 million and take years when animal testing is included in the calculus.  As a result, the hypothetical child having a genetic disease amenable to CRISPR treatment "stands little chance of timely treatment," he writes.  Added to the complexities of bringing the CRISPR drug to market, Dr. Urnov recognizes that the investment can easily be over $10 million and could (in some instances) be capable of treating only a single patient (for idiosyncratic mutations not shared by a class of patients such as with sickle cell disease where a particular shared mutation converts a glutamic acid residue to valine in the hemoglobin protein).  And the doctor notes that many patients do not have the luxury of time for all these processes to play out, making the theoretical possibility of the CRISPR magic bullet even more frustrating and tragic.

    There also have been examples of actual therapies (in "conventional" gene therapy) that have hit the roadblock of investment failure by private companies trying to commercialize university-created inventions (one involving UCLA being mentioned specifically in Dr. Urnov's article).  But while there is an economic justification for the cost of these drugs (cited here, that "a one-time cure saves the health care system years of costly supportive care"), "[f]or diseases with fewer than 100 patients, such prices [$2-3 million per patient] are still not enough for these efforts to make commercial sense."  The doctor cites cases where companies have discontinued clinical studies due to the cost of bringing the drug to market, and the dim or at least insufficient prospects of a return on investment, that have made the economic proposition untenable.

    Dr. Urnov proposes that as a first step towards improving this situation is for the regulatory regime to be revised; while it makes sense for diseases having tens of thousands of patients for a proposed treatment, for "one-of-a-kind genetic typo" cases there should be a "streamlined" process (akin to what was employed for CAR-T therapies in their infancy).  As for the role of who develops and pays for the treatments, he recognizes that private biotechnology companies cannot bear the burden.  "Tapping into federal and state funding could provide a path forward," Dr. Urnov posits, citing recent clinical trial collaborations between UCLA, UCSF, and UC/Berkeley for a gene-editing approach to curing sickle cell disease.

    But recognizing the zeitgeist he asks:  "Why should the average taxpayer contribute to building medicines for rare diseases?  Would the money be better spent on finding treatments for common ailments?"  His answer is that helping people with rare diseases will foster development of CRISPR-based treatments for more common ones.  He acknowledges that, for now, ethical considerations will limit CRISPR therapies to those patients with diseases like cancer and "devastating genetic ailments."  He expresses hope that development of these treatments will eventually produce in genetic medicine the types of advances that have been achieved in other industries.  And he advocates that while "[u]nless things change dramatically, the millions of people CRISPR could save will never benefit from it," "[w]e must, and we can, build a world with CRISPR for all."

    This essay raises a fundamental ethical question, should we and must we do what we can to achieve CRISPR-based and other revolutionary treatments in the face of the economic realities that there is no short-term economic justification for them?  History is replete with examples of seemingly fruitless efforts (Columbus, the space program) that turned out to have unappreciated (or at least unexpected) benefits, economic and otherwise.  The long-term view is that developing CRISPR and other medical technologies will produce a more robust, more productive populace, which will inure to our benefit and well-being.  The question Dr. Urnov raises is whether we will have the vision to leave behind the short-term view of present-day dollars and cents and see and act upon that possibility for a better, healthier world.

  • By Donald Zuhn

    Unified Patent CourtLast week, the Unified Patent Court (UPC) announced that the start of Sunrise Period is being postponed by two months from January 1, 2023 to March 1, 2023.  The UPC indicated that the initial plan called for the Sunrise Period to begin on January 1, 2023, with the Agreement on a Unified Patent Court (UPCA) coming into force on April 1, 2023.  However, following the UPC's adjustment, the Sunrise Period will begin on March 1, 2023, and the UPCA will come into force on June 1, 2023.

    The UPC noted that the additional time is intended to allow future users to prepare themselves for the strong authentication which will be required to access the Case Management System (CMS) and to sign documents.  The UPC announcement reminds users that they will need secure both a client authentication (hard device) and a qualified electronic signature.  Further information, including a list of providers offering CMS authentication that complies with UPC requirements, can be found on the UPC website.  The UPC notes that because strong authentication is required for the Sunrise Period, the initial timeline seemed to be insufficient in view of the legitimate interests of users who have to find a provider and acquire the required authentication tools.

    The announcement indicated that because "all other preparatory work is on track," the UPC "expect[s] no further delay of the start of the UPC beyond 1 June 2023."  In particular, the UPC noted that secondary legislation such as the UPC Rules of Procedure, has been adopted, Judges of the UPC have been appointed, the Presidium has been formed, and the Presidents of both the Court of Appeal and the Court of First Instance have been elected and have assumed their offices.

  • By Donald Zuhn –-

    WTO logoOn December 6, the same day that the U.S. Trade Representative issued a statement on the June 17, 2022 Ministerial Decision that authorized developing Members to use the subject matter of a patent required for the production and supply of COVID-19 vaccines without the consent of the right holder to the extent necessary to address the COVID-19 pandemic, nine World Trade Organization (WTO) delegations called on the General Council "to immediately extend the 17 June TRIPS Decision . . . to therapeutics and diagnostics."

    The June 17 Ministerial Decision permitted an eligible Member, which is defined to include all developing country Members, to "limit the rights provided for under Article 28.1 of the TRIPS Agreement . . . by authorizing the use of the subject matter of a patent required for the production and supply of COVID-19 vaccines without the consent of the right holder to the extent necessary to address the COVID-19 pandemic."  The "subject matter of a patent" is defined in the Decision as including the ingredients and processes necessary for the manufacture of the COVID-19 vaccine.  Eligible Members could apply the provisions of the Decision until 5 years from the date of the Decision (i.e., June 17, 2027).  One of the Decision's provisions allows any proportion of the products manufactured in accordance with the Decision to be exported from one eligible Member to another, i.e., an eligible Member can waive the requirement of Article 31(f) that authorized use under Article 31 be predominantly to supply that Member's domestic market.  As we reported last week, the June 17 Decision also included a provision that "[n]o later than six months from the date of this Decision, Members will decide on its extension to cover the production and supply of COVID-19 diagnostics and therapeutics (see "Status of Proposed Extension of TRIPS Waiver in WTO").

    Last week, the delegations of Argentina, Bangladesh, Bolivia, Egypt, India, Indonesia, Pakistan, South Africa, and Venezuela issued a communication calling on the General Council to extend the June 17 Decision to therapeutics and diagnostics.  The delegations contended that "[a] more comprehensive waiver decision as envisaged in the original TRIPS waiver proposal would support the efforts to ensure timely, equitable and universal access to safe, affordable and effective therapeutics and diagnostics, ramping up of production and expanding supply options," but noted that the adopted waiver "is of limited scope covering only vaccines."  The communication states that:

    Diagnostics and therapeutics are essential tools for a comprehensive approach to fight the pandemic, that it is not over.  Omitting these vital tools will deter the effectiveness of the decision that aims timely and affordable access to effective vaccines against the ongoing COVID-19 pandemic.

    And the delegations argue that extending the June 17 Decision to diagnostics and therapeutics "will result in a holistic approach to enable developing countries to address those IP barriers that prevent the expansion and diversification of production and increase accessibility to crucial life-saving COVID-19 tools."  The communication concludes that by extending the waiver to include diagnostics and therapeutics, "WTO Members have an opportunity to show they can act promptly to respond to the ongoing COVID-19 pandemic and the challenge of inequitable access to therapeutics and diagnostics and respond to the criticism that the Decision on vaccines came too little too late."

  • CalendarDecember 13, 2022 – USPTO IP Attaché Roundtable (U.S. Chamber of Commerce Global Innovation Policy Center) – 8:30 am to 10:30 am (ET)

    December 13, 2022 – "The Impact of Director Vidal on the PTAB" (IPWatchdog) – 12:00 pm (ET)

    December 13, 2022 – "The Future of IP Operations and Technology" (Intellectual Property Owners Association) – 12:00 pm to 1:00 pm (ET)

    December 15, 2022 – "Some Novel, Non-obvious and (Hopefully) Useful Views on IPRs, Open Innovation and Licensing" (OxFirst Limited) – 15:00 to 16:00 (GMT)

    December 15, 2022 – "DocX Filing at the USPTO" (Intellectual Property Owners Association) – 12:00 pm to 1:00 pm (ET)

    December 15, 2022 – "Advice of Counsel Defense in Patent Litigation and Protecting Attorney-Client Privilege" (Strafford) – 1:00 to 2:30 pm (EST)

  • U.S. Chamber of CommerceThe U.S. Chamber of Commerce Global Innovation Policy Center (GIPC) with the U.S. Patent and Trademark Office's IP Attachés will be offering its 16th Annual USPTO IP Attaché Roundtable on December 13, 2022 from 8:30 am to 10:30 am (ET).  The program provides a unique opportunity to engage with the assembled IP Attachés for a discussion about recent trends and challenges in IP protection and enforcement in regions around the world.

    Those interested in registering for the program, can do so here.

  • IPWatchdogIPWatchdog will be offering a webinar entitled "The Impact of Director Vidal on the PTAB" on December 13, 2022 at 12:00 pm (ET).  Gene Quinn of IPWatchdog, Inc. will moderate a panel consisting of Scott McKeown of Ropes & Gray; James Carmichael, former APJ, of Carmichael IP; and Kevin Laurence of Laurence & Phillips.  The panel will take a look back at the major developments from 2022, the changes to the PTAB ushered in by Director Vidal, and the potential for legislative reforms and rulemaking in 2023.

    There is no registration fee for this webinar.  However, those interested in registering for the webinar, should do so here.

  • IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "The Future of IP Operations and Technology" on December 13, 2022 from 12:00 pm to 1:00 pm (ET).  Mehrdad Assadi of Patrix IP Helpware, Steven Lundberg of Schwegman Lundberg & Woessner, and Thomas Marlow of Black Hills IP will provide an overview of the evolving technical and service landscapes and introduce attendees to new, cutting-edge solutions to simplify their IP back office that are increasing accuracy and efficiency while simultaneously reducing cost, headcount, and risk.

    The registration fee for the webinar is $150 for non-members or free for IPO members (government and academic rates are available upon request).  Those interested in attending the webinar should register here.

  • OxFirstOxFirst Limited will be offering a webinar entitled "Some Novel, Non-obvious and (Hopefully) Useful Views on IPRs, Open Innovation and Licensing" on December 15, 2022 from 15:00 to 16:00 (GMT).  Ove Granstrand, Professor in Industrial Management and Economics at Chalmers University of Technology in Sweden and visiting professor at Stanford University and Cambridge University, will discuss the fairness principles, different bargaining outcomes, and value capture distributions associated with IPRs and patents and open innovation via partnering, venturing, licensing or technology intelligence.

    While there is no cost to participate in the program, those interested in attending the webinar should register here.

  • IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "DocX Filing at the USPTO" on December 15, 2022 from 12:00 pm to 1:00 pm (ET).  Bradley Forrest and Kasie Grover of Schwegman Lundberg & Woessner, and Richard Seidel, Deputy Commissioner for Patents, U.S. Patent and Trademark Office will discuss the USPTO's Patent Center platform, the platforms being replaced by Patent Center, and the various features of Patent Center, as well as the new DOCX patent filing requirements and the related pros and cons, and offer best practice tips associated with DOCX filings.

    The registration fee for the webinar is $150 for non-members or free for IPO members (government and academic rates are available upon request).  Those interested in attending the webinar should register here.

  • Strafford #1Strafford will be offering a webinar entitled "Advice of Counsel Defense in Patent Litigation and Protecting Attorney-Client Privilege" on December 15, 2022 from 1:00 to 2:30 pm (EST).  Monte Cooper of Goodwin Procter, Azra Hadzimehmedovic of Tensegrity Law Group, and Lionel M. Lavenue of Finnegan Henderson Farabow Garrett & Dunner will examine the issues of privilege in the context of opinions of counsel and the use of the advice of counsel defense, and will review recent decisions and offer best practices for limiting the scope of discovery of communications and work product related to the advice of counsel defense and protecting the privilege.  The webinar will review the following issues:

    • What is the practical impact of recent decisions on utilizing opinions of counsel in defense of willful infringement while protecting privileged communications and attorney work product?
    • What considerations regarding possible waiver of the attorney-client privilege and work product immunity should counsel consider before asserting the advice of counsel defense in patent infringement litigation?
    • What are the best practices for counsel and corporations to preserve the attorney-client privilege and work product immunity?

    The registration fee for the webcast is $347.  Those interested in registering for the webinar, can do so here.