Graf von Stosch scores wins for CureVac in EPO oppositions

CureVac is defending several patents at the EPO and before national civil courts in Germany and UK. At the centre of the current dispute are EP 3 708 668 and its divisional patent EP 4 023 755.

Both protect split poly-A tail technology which, according to CureVac, enhances medical efficacy by improving expression of the protein encoded on an mRNA construct. The technology came to prominence during the Covid-19 pandemic when several vaccines based on mRNA technology were developed.

Now the EPO has upheld EP 755 in amended form. According to CureVac, the amendments made in the opposition proceedings further clarify the scope of protection. Only recently, the Opposition Division reached a similar decision regarding EP 668. BioNTech announced that they will appeal the decision.

Pfizer and BioNTech were among those who filed opposition against both patents. CureVac is conducting parallel infringement proceedings against BioNTech in Germany. On 1 July, Chamber 4c of Düsseldorf Regional Court will hear the infringement case concerning both patents (case IDs: 4c O 40/23 and 4c O 51/22). The court recently announced that its presiding judge, Sabine Klepsch, is transferring to the UPC full-time. As Düsseldorf Regional Court informed JUVE Patent upon request, the new presiding judge of the 4c Chamber Carsten Haase will preside over the hearing.

Parallel disputes

In the parallel UK dispute, the High Court declared the two CureVac patents invalid last autumn due to lack of plausibility, insufficiency and lack of inventive step (case ID: HP-2022-000023). The judgment is final with no appeal permitted.

Since summer 2022, the parties have disputed various intellectual property rights relevant to mRNA technology. The dispute also focused on CureVac’s EP 1 857 122 B1 and various German utility models. In December 2023, the German Federal Patent Court nullified the German part of EP 122 and deleted the utility models. An appeal is pending at the Federal Court of Justice.

Previously, Düsseldorf Regional Court had suspended the infringement proceedings until the validity question was clarified.

Well-established representation

For the EPO opposition, CureVac relied on Andreas Graf von Stosch. The patent attorney and name partner of small Munich-based outfit Graf von Stosch was involved in filing the patents. The firm is also active in disputes over CureVac’s related patents, such as EP 122, and provides technical support in the parallel infringement proceedings at Düsseldorf Regional Court, where it cooperates with litigators from international firm Bird & Bird.

The firm, which is well known for patent disputes, previously represented CureVac in the infringement claims over EP 122. Düsseldorf partner Oliver Jüngst is leading all proceedings.

Sebastian Höpfner of patent attorney firm Zwicker Schnappauf & Partner represented first opponent BioNTech. Together with name partner Georg Schnappauf, he was equally active in the EP 122 dispute. In the parallel infringement proceedings, they are working alongside litigators from Hoyng ROKH Monegier, led by Düsseldorf-based partner Christine Kanz. Both teams also represent the German biotech company in the extensive dispute against Moderna.

Pfizer retained Michael Eder of Munich-based patent attorney firm df-mp Dörries Frank-Molnia & Pohlman. The pharma company is a long-term client of the firm. Together with name partner Ulrich Dörries, Eder also represents Pfizer in several opposition proceedings against Moderna and provides technical support to litigators in the German infringement proceedings.

In addition to Pfizer and BioNTech, Sanofi and US law firm Cooley also challenged EP 668 and EP 755. Both retained Carpmaels & Ransford, with David Holland acting for Sanofi and Anna Leathley filing the opposition for Cooley. Sanofi is also retaining a Carpmaels team in the dispute against Moderna.