Gates Foundation – CureVac, RNA Rotavirus Vaccine R&D Collaboration Agreement

Intellectual property | Protection of IP

Summary of Approaches

Who has the decision-making authority and responsibility for patent prosecution, maintenance and enforcement?
- CureVac is responsible for patent prosecution, maintenance and enforcement at its discretion.
Is there a mechanism for information sharing and cooperation between the parties in relation to patent prosecution, maintenance and enforcement activities?
- The Foundation may review and comment on Curevac’s patent strategy, including decisions on if Project IPR should be patented or dedicated to the public domain, as well as on draft patent applications.
- Comments provided by the Foundation (at the Foundation’s expense) will be reasonably considered by CureVac.
Can the IP owner abandon the prosecution or maintenance of a patent?
- If CureVac chooses not to prosecute or maintain a patent, the Foundation may assume responsibility, costs, and ownership, in which case it will grant CureVac a perpetual, worldwide, royalty-free, sublicensable, non-exclusive license for all disclosed and claimed Project IPRs.
How should IP protection expenses be allocated between the parties?
- Costs will be borne by CureVac, unless the Foundation assumes responsibility for patent prosecution or maintenance.

Annotations

This Definitive Agreement and Project Collaboration Plan for Assessment of RNA Vaccine Technology for Non-live Rotavirus Vaccines in Pre-clinical Models (“Agreement“) between the Gates Foundation (“Foundation“) and CureVac GmbH (“CureVac“) is effective May 2014. The Agreement was signed pursuant to a separate Framework Agreement for Cooperation between the parties under which they agreed to cooperate in establishing projects for the R&D of new candidate vaccines.

Under the terms of the Agreement and subsequent amendments, the Foundation will provide up to USD $3 million in funding for CureVac to perform activities under a Project Collaboration Plan set out in Appendix 1 to the Agreement (“Activities“). The Activities include a global access plan recognizing the overarching goal of making products more available and accessible in Developing Countries (defined as countries eligible for Gavi support), as well as ensuring the broad dissemination of data and results.

CureVac will own intellectual property created in the performance of the Activities (“Project IPR“) but must manage it in a way that will best achieve the project’s global access objectives. This may include sublicensing the Project IPR at CureVac’s discretion. If the project success criteria are met and CureVac elects not to participate in further development, the Parties will enter into good faith negotiations for an agreement allowing the Foundation and its partners or grantees to proceed. Such an agreement must include licenses under necessary CureVac intellectual property, as well as access and permissions to use data generated under the Agreement.

Provision Language

7. Intellectual Property

[…]

7.5. Any and all decisions relating to the filing, prosecution and maintenance of patents that disclose and claim inventions that are Project IPRs, shall be at the discretion of CUREVAC. The Foundation shall, however, during the course of this Agreement have the right to review and provide comments on patent filing strategy – including whether Project IPR should be the subject of a patent application or should be dedicated to the public domain – and all draft patent applications. The Foundation may provide such comments either directly or through a representative of its choice and such comments shall be provided no later than [*****] after notification by CUREVAC and at its own expense. CUREVAC shall reasonably take into consideration all the Foundation’s comments. All costs associated with the drafting, filing and prosecution of patent applications directed to Project IPRs shall be borne by CUREVAC, provided that CUREVAC shall be under no obligation to seek patent protection and/or maintain patents. If during this Agreement, CUREVAC determines not to continue to prosecute and/or maintain patent protection for Project IPR, CUREVAC shall inform the Foundation and allow the Foundation not less than [*****] to take over responsibility for the prosecution and maintenance of such applications and patents, in which case the responsibility, costs related to the assignment of the Project IPR as well as any future costs and rights relating to the relevant inventions and ownership thereof shall vest in the Foundation. In the event that the Foundation takes over the responsibility for such patent applications and patents, CUREVAC shall retain a non-exclusive, sublicensable, world-wide, perpetual, fully paid-up, royalty-free license for any and all purposes under Project IPRs disclosed and claimed therein.

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Gates Foundation – CureVac, RNA Rotavirus Vaccine R&D Collaboration Agreement

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