German Federal Patent Court changes its mind on CureVac mRNA patent

CureVac has today suffered a defeat in its dispute against BioNTech over mRNA patents, after the German Federal Patent Court nullified the German part of an important patent. The decision will affect the parallel infringement proceedings, on which the Regional Court Düsseldorf is expected to rule before the end of the year.

In Germany, CureVac accuses BioNTech of infringing two patents and three utility models with its mRNA vaccine Comirnaty. One of them, EP 1 857 122 B1, protects a process that improves the expression of mRNA in cells. BioNTech challenged the patent with a nullity suit (case ID: 3 Ni 23/22), with the Mainz-based biotechnology company claiming that EP 122 lacks novelty and is not inventive.

Turn around for CureVac

In April 2023, the German Federal Patent Court issued a preliminary opinion confirming the validity of EP 122. However, the court has now revised this opinion. After the oral hearing today, the judges nullified EP 122. According to a press release, CureVac will appeal against this decision before the Federal Court of Justice.

In parallel infringement proceedings, Düsseldorf Regional Court’s Civil Chamber 4c had originally scheduled a ruling concerning EP 122 for 28 December (case ID: 4c O 38/22). In view of the nullity suit decision, however, it is unlikely that it will hand down the infringement ruling as planned. The press release states that it is likely to be postponed.

mRNA at the centre

The dispute between CureVac and BioNTech includes other IP rights of the Mainz-based biotech company (case IDs: 4c O 46-48/22 and 4c O 51/22). BioNTech has also challenged three utility models (DE 20 2015 009 961 U1, DE 20 2015 009 974 U1 and DE 20 2021 003 575 U1) and filed an opposition at the EPO against EP 3 708 668 B1.

At the end of September, Düsseldorf Regional Court suspended parallel proceedings in the infringement action pending the decision of the German Patent and Trademark Office (DPMA) in the cancellation proceedings concerning the utility models and of the EPO’s Opposition division concerning EP 668.

According to a press release, however, the Civil Chamber 4C under presiding judge Sabine Klepsch believes the opposition and the cancellation suits will likely be successful. Both companies have relied on their advisors since the beginning of the dispute.