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Moderna v Pfizer: Court of Appeal upholds mRNA patent; novelty requires individualised disclosure from lists; 'obvious to try' rejected; practical skilled evidence preferred (England and Wales)

Published on: 17 September 2025

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(Modernatx, Inc v Pfizer Ltd and other companies [2025] EWCA Civ 1032) What are the practical implications of this case? Selection from lists and classes in prior art

The Court of Appeal reaffirmed that prior art only anticipates a claim where it contains an individualised description of the very invention asserted. Merely assembling elements from two or more enumerations—such as a roster of modified nucleosides alongside a set of percentage substitutions—will not strip novelty unless the earlier disclosure unmistakably directs the reader to that precise pairing. This approach, consistent with EPO Boards of Appeal jurisprudence and domestic authorities including Dr Reddy’s Laboratories v Eli Lilly, is of particular significance for those drafting or contesting patents in areas where inventions are characterised by combinations of known attributes.

Applying that test, the court found the UPenn application canvassed a wide spectrum of modified nucleosides and potential levels of replacement, yet it lacked a clear pointer to the exact constellation claimed by Moderna—ie, a 100% substitution of uracil with N1-methylpseudouridine in mRNA. Without an explicit steer to that specific combination, anticipation was not made out. The judgment...

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