Precision BioSciences, Inc, announced that the United States Patent and Trademark Office (PTO) granted requests filed by Precision BioSciences to re-examine two issued US patents owned by the Institut Pasteur and the Universite Pierre et Marie Curie (UPMC), and licensed to Cellectis, SA. In addition, the PTO rejected all 17 claims of US Patent No 7,214,536 and 18 of 19 claims of US Patent No. 6,833,252 as obvious in view of a variety of references which had not been previously considered by the patent examiners.

"The rejections issued by the US Patent Office are nearly identical to Precision's arguments that the patents which form the core of Cellectis' IP portfolio do not cover Precision's technology and are invalid. If the court adopts the same interpretations of the claim terms and prior art references as the Patent Office, there is no doubt that Precision will ultimately prevail in its ongoing litigation with Cellectis," said Matthew Kane, CEO of Precision BioSciences.

Kane added, "Those references were demonstrably known to the patent applicants but were never disclosed by them to the Patent Office. We believe that, by failing to disclose those references, the inventors, the assignees or Cellectis engaged in inequitable conduct, and that these patents were obtained by fraud."

A finding of inequitable conduct in the prosecution of the Institut Pasteur/UPMC patents could cause the entire family of thirteen issued US patents, all of which relate to the use of Group I intron encoded endonucleases to promote homologous recombination, to be declared unenforceable in the United States.

"The patents asserted against Precision by Cellectis are directed to a dated technology which uses endonucleases that exist in nature," observed Dr Derek Jantz, vice president for Scientific Development at Precision. "In contrast, Precision BioSciences uses proprietary protein engineering techniques to produce novel endonucleases that can be used to specifically target and modify predetermined sites in large genomes. In one of the recent office actions, the PTO specifically states that Cellectis' patent claims do not include genetically engineered enzymes, which means they do not cover Precision's technology."

Dr Jeff Smith, the chief scientific officer of Precision stated, "We have always been confident that Precision's DNE technology does not infringe any reasonable interpretation of the claims asserted against us. These Office Actions now make it even more clear that Precision does, in fact, have the right to exploit its next-generation DNE technology."

Precision's mission is to utilize its engineered endonuclease technology to become the world leader in the field of genomic molecular biology.