After the Rulings, the Reasoned Orders: a note on Queensland and Daiichi

On my travels and beset by some miserable connectivity, I've not been able to keep the flow of posts going as I would have liked. It is therefore with both thanks and apologies that I bring you this note which The SPC Blog received from Marjan Noor and Andrew Hutchinson (Simmons & Simmons LLP) last week:

"We had not seen much commentary on the above Reasoned Orders so bring them to your attention. Queensland is particularly interesting in relation to process patents:

Queensland, paras 40-41:

40 … just as Article 3(a) of Regulation No 469/2009 precludes the grant of a SPC relating to active ingredients which are not specified in the wording of the claims of the basic patent (Medeva, paragraph 25), where the basic patent relied on in support of a SPC application relates to the process by which a product is obtained, that provision also precludes a SPC being granted for a product other than that identified in the wording of the claims of that patent as the product deriving from that process. The grant of a SPC is not conditional on whether it is possible to obtain a product directly as a result of the process by which the product is obtained, where that process has been the subject of a patent.

41 The answer to Question 6 is therefore that, in the case of a basic patent relating to a process by which a product is obtained, Article 3(a) of Regulation No 469/2009 precludes a SPC being granted for a product other than that identified in the wording of the claims of that patent as the product deriving from the process in question. Whether it is possible to obtain the product directly as a result of that process is irrelevant in that regard."

Many of the paragraphs in all three reasoned orders are the same and include the same references to the Medeva judgment. The conclusions in Case C-6/11 Daiichi follow Yeda and emphasise the need for an active ingredient to be "identified in the wording of the claims". Queensland takes this principle and applies it to process patents, which are required to identify the product of the process; the process alone seems to be insufficient. Queensland also repeats Medeva's "one SPC per patent rule" in the context of process patents".