법무법인(유한) 율촌 | Yulchon LLC

CRISPR-Cas9 is a revolutionary new technology that can be used to edit genes, for which Professors Emmanuelle Charpentier and Jennifer A. Doudna won the 2020 Nobel Prize in Chemistry. Genetic scissors technology has received much attention and is recognized as having many beneficial applications for future industry, as it may allow for more stable production of plant and animal resources and may be used to cure genetic diseases.

ToolGen, established by Professor Jin-Soo Kim, filed for a patent in 2012 disclosing the use of the CRISPR-Cas9 system in the genome editing of eukaryotes. ToolGen is currently involved in a dispute with the Broad Institute of MIT (led by Feng Zhang) and the University of California at Berkeley (led by Doudna) over securing the original patent. In 2018, a graduate student on Professor Kim’s team falsely alleged in a report that, “The CRISPR patents were not the result of joint research with ToolGen, but were instead the result of a government-funded research project, which required project participants to assign their rights in foreground IP to Seoul National University. Despite the foregoing, ToolGen unfairly registered a patent under its name with respect to the outcome of the government-funded research project.” This report caused ToolGen to be involved in several legal disputes.

In defending ToolGen, Yulchon stressed the limited scope of the government-funded research project. Specifically, Yulchon pointed out that the government-funded research project was for genome rearrangement using Zing-finger, a first generation genetic scissors technology, and was limited to a study on the treatment of hemophilia caused by inversion, a type of genome rearrangement. On the other hand, the pioneering invention of CRISPR is consistent with ToolGen’s independent research project, which is on local genomic mutations. Based on its in-depth understanding of the science and technologies involved in this field, Yulchon persuasively conveyed to the court the material differences between genome rearrangements and local variations, the circumstances leading to the technological development in genetic scissors, and ToolGen’s research results.

A significant Yulchon achievement for this case was that, during the interrogation of two key witnesses for the prosecution, Yulchon was able to employ its expertise in chemical technology and extensive practice experience regarding patent application and registration and claim interpretation, to successfully impeach the credibility of the witnesses. This, along with briefs that demonstrated thorough knowledge of the relevant technical fields, ultimately led to Yulchon obtaining an acquittal for the defendants.