EPO finally revokes Stada sunscreen patent in battle with German drugstores

A dispute over sunscreen that began in spring 2023 is drawing to a close this winter. Patent holder Stada initiated the dispute while the opposition period for the patent at the EPO was still ongoing. The patent, EP 2 233 127, covers the use of antioxidants to prevent sun damage from infrared rays.

Stada had filed multiple infringement suits against competitors, including major German drugstore chains dm and Rossmann, at Munich Regional Court (case ID: 7 O 5338/21). The court suspended these proceedings as some defendants and contract manufacturers challenged the patent during the EPO opposition period.

The EPO revoked the patent at first instance. This week, the Technical Board of Appeal 3.3.02 dismissed Stada’s appeal. The patent is now null and void, leaving the pending infringement actions with no prospect of success.

Higher threshold

This is one of the few intensive disputes about sunscreen in Germany. It likely targeted the summer 2023 market.

Notably, Stada specifically targeted the lower-priced sunscreen market in German drugstores, leaving higher-priced pharmacy brands out of the dispute. According to JUVE Patent research, the dispute was confined to the German market, despite the EPO’s broad scope.

In the hearing before the Technical Board of Appeal, as in the first instance, the argument of plausibility was paramount. It appears the EPO has raised the bar for patents since the G 2/21 decision on plausibility if feasibility is not immediately evident from the patent.

Opponents successful

Patent owner Stada worked with its regular representatives from Hamm & Wittkopp in Hamburg. Malte von Seebach led the case, with Sigrid von Krosigk providing support.

Daniel Hoppe is conducting the associated infringement proceedings. He worked at Preu Bohlig until the proceedings were suspended, but has since left with a larger team to found Bonabry.

The first opponent is German family-owned company Dalli-Werke, which manufactures household and personal care products. It worked with its preferred patent attorney Barbara Engels from f & e patent in Bergisch Gladbach.

The second opponent is Symrise, a listed supplier of fragrances, flavourings, cosmetic raw materials and active ingredients. The Holzminden-based company worked with a team from Eisenführ Speiser. Patent attorneys Manuel Söldenwagner, Stefanie Papst and Dominik Reim presented significant parts of the case at the hearing, working alongside Sönke Scheltz for the parallel infringement proceedings.

German drugstore chain Dirk Rossmann relied on its regular representative Jan Krauss from SKM-IP in Munich and solo practitioner Sönke Ahrens for the infringement proceedings. Stefan Kappe, general counsel, represented the company in-house.

Cosmetics company Emil Kiessling from Georgensgmünd worked with patent attorney Martin Herzog from Herzog IP. The company is a contract manufacturer for various brands, including dm, according to press reports.

Another German contract manufacturer is Mann & Schröder. The Baden-Württemberg-based company worked with patent attorney Michael Barth from Eder Schieschke & Partner in Munich.

Drugstore chain dm-Drogerie Markt instructed patent attorney Anke Leitner from LBP Lemcke, Brommer & Partner in Karlsruhe.

Another opponent was Mibelle, a subsidiary of Swiss retail group Migros, which claims to be Europe’s third-largest private label manufacturer. It instructed patent attorney Martin Wilming from Swiss law firm Hepp Wenger Ryffel.

Marcus Müller chaired the EPO’s Technical Board of Appeal 3.3.02, with technical judge Matthias Kollmannsberger as rapporteur.