A niche blog dedicated to the issues that arise when supplementary protection certificates (SPCs) extend patents beyond their normal life -- and to the respective positions of patent owners, investors, competitors and consumers. The blog also addresses wider issues that may be of interest or use to those involved in the extension of patent rights. You can email The SPC Blog here

Friday, 13 January 2012

As easy as (a), (b) -- but maybe not (c) and (d)?

Following yesterday's post, which featured De Brauw's handy table that summarised the current position now that the Court of Justice has given a whole battery of judgments and orders regarding SPC subject matter, The SPC Blog has now heard from John Miles (Potter Clarkson). John -- who was the agent for Georgetown University et al. in Case C-422/10 -- makes reference to his own firm's newsletter coverage of the Yeda, Queensland and Daiichi cases (you can find it here, under the heading “Supplementary Protection Certificates: Some further twists”) and adds:
"You will see that we have speculated that Yeda could be interpreted to suggest that explicit naming of active ingredients in the claims is not necessary to satisfy the “specified in the wording of the claim” test that comes from Medeva. We also point to the difference in wording between Medeva (“specified”) and the other cases (“identified”) but conclude that no difference is meant".
Regarding the De Brauw table, he adds:
"this only takes account of the situation under Articles 3(a) and 3(b), and not 3(c) and 3(d). It is not entirely clear that all of the SPC applications necessarily satisfy Articles 3(c) and 3(d) even if they do satisfy Articles 3(a) and 3(b), and it will be interesting to see if and how the English courts consider this point".
What do other readers think?


Anonymous said...

The folks at Potter Clarkson may have a point, but I think it's a bit of a stretch to say that Yeda goes that far.

Para 33 of Yeda is the CJEU's re-crafting of the question that was put in front of it, so the whole thing must be read with that in mind. (Strictly speaking, the court did not actually answer the question that it was asked. Nevertheless, it went ahead and answered their own question anyway, so we'll have to deal with what we've got in front of us.)

Having crafted the question in this particular way, the CJEU then tries to make it all fit togther with Medeva. So, they start with Para 37 (of Yeda), in which they roll out out the ratio from Medeva, as you'd expect.

However, I do not think that you can conclude that the CJEU actually made a ruling on the facts / the claim in Yeda. The CJEU does not tie para 37 back to the actual claim in from the Yeda patent. i.e. They do not actually say whether cetuximab is identified in the (first limb) of the claims of the Yeda patent. (Indeed, that's not a job for them anyway - that's to be left to the national court in question).

I read the CJEU in Yeda as effectively saying: "even if cetuximab was identified in the first limb of the claim of the Yeda patent (and we're not saying whether it was or it was not, because it's not our job to say so), then you can't have the SPC because there was no claim to the active ingredient alone"...

...but I could be wrong of course.

Anonymous said...

I'm with anonymous on this - the CJEU seemed to be saying that "even if" the active was specified in the 3(a) sense, the claim was still not suitable because it required the presence of another active.

...but the CJEU could have been wrong of course.

Anonymous said...

Seems like Mr Justie Arnold (from the UK Patents Court) agrees. See paragraph 58 of Novartis v Medimmune, 10 February 2012.