EPO revokes key Moderna patent for mRNA vaccines

In September, the EPO Boards of Appeal revoked a key patent for mRNA vaccines, on the basis of which Moderna had brought legal action against BioNTech and Pfizer.

During the two-day oral hearing, Board of Appeal 3.3.08 revoked EP 3 590 949, which had previously been upheld at first instance. Although the Board has not yet published its grounds for the decision, JUVE Patent research suggests the prohibition of added matter was a factor. The Board revoked the patent because the subject matter claimed went beyond the information contained in the original patent application. This decision is yet another example of the EPO interpreting the added matter rule more strictly than other national courts in Europe.

Further litigation in the pipeline

This decision is a bitter setback for Moderna, as it nullifies the successes it had previously achieved before the national courts in London and Düsseldorf. This litigation also concerned EP 3 718 565, but the Boards of Appeal had already upheld that patent’s revocation back in January.

Even without these patents, the litigation between the parties is likely to continue. Firstly, there are divisional applications arising from EP 949. EP 4 435 100 is still at the examination stage. The earlier divisional application EP 4 108 671 is currently subject to opposition proceedings.

The patent portfolios of Moderna, Pfizer, BioNTech, and CureVac are extensive. The UPC register offers an initial indication of new venues for litigation. For example, it lists a new action brought by CureVac — which was acquired by BioNTech — against Moderna at the local division in The Hague concerning EP 4 108 769 (case ID: UPC-CFI-0001407/2026).

On the legal front, however, there were no surprises at the EPO. Leading the opposition were Michael Eder and Ulrich Dörries of df-mp on behalf of Pfizer, with Nicolas Raeder also part of the team. Marc Markus and Thomas Pringot represented Pfizer in-house.

Georg Schnappauf and Thomas Wilk of Zwicker Schnappauf & Partner represented BioNTech, with Sebastian Höpfner providing support.

In addition, there were several straw man opponents. Jon Philip Broughton and Francis John Tierney from Patent Boutique LLP, and Dirk Bühler and Anna Closs from Maiwald, attended the hearing.

Patent holder Moderna worked with a team from Hoffmann Eitle, comprising Carla Roth in the lead, David Miller, Joachim Renken, and James Ogle. Katherine Hinterberg, senior director of patent litigation at Moderna, represented the company in-house. Lawyers from Freshfields, in particular Nina Bayerl, Laura Whiting and Nathan Madeson, provided support.