Moderna Inc. MRNA 4.53% has abandoned its application for a U.S. patent covering its Covid-19 vaccine that has been the subject of a heated dispute with the National Institutes of Health over the invention of a key component of the shot.
The Cambridge, Mass., company said Friday it dropped the patent application “to allow more time for discussions with the NIH” aimed at an amicable resolution.
At issue was credit for a key component of Moderna’s Covid-19 vaccine, among the most widely used in the world. Patent holders could seek a cut of the shot’s billions of dollars in sales, though NIH hasn’t said whether it is interested in royalties.
The dispute arose over Moderna’s application in 2020 to the U.S. Patent and Trademark Office for a patent claiming the invention of a genetic sequence incorporated into its vaccine to trigger an immune response against the coronavirus.
Moderna had collaborated with scientists from the National Institute of Allergy and Infectious Diseases, which is part of the NIH, on developing and testing the vaccine.
The NIH asked Moderna to add the names of three government vaccine researchers as co-inventors in the patent application, but Moderna denied the request, sparking the dispute.
The NIH said in November it wouldn’t give up its claim as co-inventor of the vaccine, and would defer to legal authorities on how to resolve the dispute.
Moderna said it still believes that its own scientists invented the genetic sequence at the heart of the patent in question. Moderna said it also acknowledges that the NIH feels equally strongly that its scientists should be listed as co-inventors for their contemporaneous work on the sequence.
NIH didn’t immediately have a comment.
The sequence in question uses the genetic material known as messenger RNA, which instructs the body’s cells to make a version of the spike protein found on the surface of the coronavirus and in turn triggers the immune response.
The patent office earlier this year notified Moderna that the patent would be allowed. The patent’s issuance was pending until Moderna dropped it.
Moderna said Friday that if the patent had been issued, it could have interfered with further discussions aimed at resolving the dispute with the NIH. The company said it also wanted to avoid further distractions as it responds to the emerging Omicron variant of the coronavirus.
Moderna said it notified the NIH of its decision on Dec. 10. Moderna has filed a separate type of application that could enable a patent to be issued at a later date, the company said.
Write to Peter Loftus at peter.loftus@wsj.com
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Appeared in the December 18, 2021, print edition as ‘Moderna Drops Pursuit of Patent.’
