As sales from COVID-19 vaccines continue to flounder, lawsuits associated with the products keep on piling up. In the latest, the University of Pennsylvania targets Pfizer’s Cormirnaty vaccine partner BioNTech for additional royalties it allegedly owes to the university.
The litigation hinges on Penn’s patented mRNA technologies and a sublicense agreement BioNTech made to get its hands on the science, which it uses in Corminaty.
Penn’s work in the mRNA space dates back to 2005, when Drew Weissman, M.D., Ph.D., and Katalin Karikó, Ph.D., made a Nobel Prize-winning discovery now known to be “foundational” to mRNA development and thus COVID-19 vaccines, according to the lawsuit. The university licensed the associated patent rights to multiple drugmakers and eventually BioNTech through a sublicense with another company. The agreement puts Penn in line for undisclosed royalties on net sales of licensed products.
In the lawsuit, the university accuses the German drug manufacturer of breaking its contract by skimping on the royalties owed under the agreement, claiming it has only paid “a portion” of the royalties that would stem from worldwide Comirnaty sales.
More specifically, BioNTech is allegedly only paying royalties for product sold into a country where Penn has a patent as opposed to royalties on product that’s made in a country where Penn has a patent.
According to the school, the royalty agreement has to do with where the med is manufactured, “regardless of where the product is ultimately administered.” Since the drugmaker makes Comirnaty in countries where Penn’s patents stand, it owes the patent holder a royalty on “all product” as opposed to a portion on worldwide sales.
The legal action seeks monetary manages and a judgement compelling BioNTech to comply with its duties required under the sublicense.
"BioNTech’s guiding principle in collaborations is generally driven by mutual respect and fairness, which is why we have been in discussions with the University of Pennsylvania regarding royalties for over a year," a company spokesperson said in an emailed statement. "We disagree with the positions being taken by the University of Pennsylvania, and intend to vigorously defend ourselves against their allegations.”
The company, along with Pfizer and Moderna, has been on the receiving end of plenty of patent lawsuits since it rose to major commercial success on the back of its COVID vaccine. Outside of an ongoing back-and-forth with Moderna and complaints from CureVac, Pfizer and BioNTech were targeted in a GSK lawsuit back in April. GSK accused the partners of stepping on five of its own mRNA-related patents and seeks a “reasonable royalty” as well as a licensing fee.