EPO revokes Stada suncream patent after opposition from German drugstores

The European Patent Office has nullified EP 2 233 127, belonging to German pharmaceutical company Stada, following multiple parties filing oppositions against the patent. EP 127 covers the use of antioxidants for the preparation of pharmaceutical or cosmetic compositions, which protect the skin from infrared radiation damage.

Suncream on the market

Such formulas are used in consumer products such as suncreams. Global cosmetic product ingredient provider Symrise had developed sun protection products containing dipeptide anti-ageing ingredient, Dragosine, which forms the basis of Stada’s accusations. It is now likely that the German Federal Patent Court will destroy the patent.

The EPO granted EP 127 over a year ago, after which Stada filed infringement proceedings at the Regional Court Munich against Dirk Rossmann, Müller Handels, and dm-Drogerie Markt. However, during the opposition period, the parties then filed an EPO opposition case against the patent, with multiple other parties including Dalli-Werke, Symrise, Emil Kiessling, Mann & Schröder, Merck and Mibelle joining as opponents.

In a preliminary opinion, the EPO stated the patent was likely invalid for lack of novelty over the prior art. However, in oral proceedings on 27 June, the EPO’s Opposition Division declared that a lack of enablement led to the patent’s revocation. In the meantime, the Regional Court Munich has stayed infringement proceedings.

G 2/21 in play

Given the patent’s application as second medical use, the examiners referred to the recent G 2/21 decision on plausibility – namely, that an application must provide proof that the patent covers a claimed therapeutic field. Thus, the examiners found that Stada’s application for EP 127 did not go far enough in its enablement.

Commercially, the result has worked in Stada’s competitors’ favour. While the company may have hoped that enforcing its patent before summer would impact the suncream market in Germany, now the opponents can continue selling in pharmacies. The patent expires in 2025. JUVE Patent is unaware whether Stada intends to file appeal proceedings against the EPO’s decision.

A united front

Multiple patent attorney firms are involved in the opposition proceedings. Hamburg-based Hamm & Wittkopp often represents generic drug manufacturers in high-stakes cases, with the team led by partner Malte von Seebach taking the lead in opposition proceedings. In the parallel litigation case, according to JUVE Patent information, IP firm Preu Bohlig & Partner represents regular client Stada. The firm also represents Stada as a co-defendant with Aliud Pharma against Bayer over cancer drug, Nexavar.

Mixed firm Eisenführ Speiser represents Symrise, which it works for in both litigation and opposition proceedings. A three-partner-strong patent attorney team led the way for the cosmetics manufacturer, while litigator Sönke Scheltz handled the infringement proceedings.

SKM-IP partner Jan Krauss, who was a partner at Boehmert & Boehmert until the end of 2022, represented Rossmann in proceedings, having taken the client to his new firm. Stefan Kappe, in-house general counsel at Rossmann, supported Krauss in opposition proceedings, while Sönke Ahrens of Ahrens IP is working for the drugstore as its litigation counsel.

Gregor König of renowned patent attorney firm König Szynka Tilmann von Renesse initially represented Müller Handels, although the company has since withdrawn its opposition. Merck Patent, the in-house department of pharmaceutical company Merck, was also not present at proceedings.

EPO representatives

For Stada
Hamm & Wittkopp (Hamburg): Malte von Seebach (partner); Sigrid von Krosigk (both patent attorneys)

For Dalli-Werke GmbH & Co. KG
f & e patent (Bergisch Gladbach): Barbara Engels (partner, patent attorney)

For Symrise
Eisenführ Speiser (Munich): Manuel Söldenwagner, Stefanie Papst, Dominik Reim (all partners, all patent attorneys)

For Dirk Rossmann
SKM-IP (Munich): Jan Krauss (partner, patent attorney)
In-house (Hanover): Stefan Kappe (general counsel)

For Emil Kiessling
Herzog IP (Düsseldorf): Martin Herzog (partner, patent attorney)

For Mann & Schröder
Eder Schieschke & Partner (Munich): Michael Barth (partner, patent attorney)

For dm-Drogerie Markt
LBP Lemcke, Brommer & Partner (Karlsruhe): Anke Leitner (partner, patent attorney)

For Mibelle
Hepp Wenger Ryffel (Wil, Switzerland): Martin Wilming (partner, patent attorney)

European Patent Office, Opposition Division, Munich
Karl Günther Bader (presiding member); Pierre Steffen (first examiner); Marinella Verrucci (second examiner)