Medeva and the role of the Advocate General: a call for more communication

Regular reader and occasional commentator Paul Inman (Wragge & Co. LLP) has been giving some further thought to the role of the Advocate General in shaping and applying legal policy where issues have been referred to the Court of Justice of the European Union for a preliminary ruling. He writes:

"One (of many) of the causes of consternation arising from Advocate-General Trstenjak’s Opinion in the Medeva reference (discussed many times  in earlier posts on this weblog) was her contention (in para 102) that:

“according to the Court’s case-law, only one supplementary protection certificate may be granted for each basic patent”.

This has caused more than a few squawks of concern by commentators across the continent (and indeed beyond), not least on this blog.

A-G Trstenjak attributes this “case-law” to paragraph 28 of the ECJ Judgment in the Biogen case, from which she has taken a literal quote of the final words of that paragraph. As the world and his wife have since pointed out, however, this is not consistent with past and current practice around Europe (and many examples of multiple SPCs based on single patents have been brought forward).

Of course, the ECJ judgment in Biogen was founded on, and came to very much the same conclusion as that reached by Advocate-General Fennelly in that case. I was struck, therefore, while perusing A-G Fennelly’s opinion in Biogen (as one does on a Friday evening) with paragraph 53 of his opinion, which closes with the words:

“It is nowhere stated that a patent can be the subject of only one certificate, or of a certificate only in respect of one medicinal product, as the same patent may be used for widely differing medicinal products.”

Hurrumph! Don’t these Advocates-General talk to each other? Perhaps Angela Merkel is right – perhaps peace in Europe should not be taken for granted".