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

Thursday, 17 October 2013

Actavis v Boehringer: more questions for the CJEU

There's a double blog-post on the IPKat (here and here) on Actavis v Boehringer [2013] EWHC 2927, a Patents Court, England and Wales, decision from the recently-promoted Mr Justice Birss which was handed down last month but which is still not available in the BAILII databank. The first post gives a brief background and deals with the four further questions that have been referred to the Court of Justice of the European Union for preliminary rulings, while the second deals with an important practical issue: the scope of a cross-undertaking where the alleged infringer has agreed to keep a product covered by the disputed SPC off market pending the full trial.

The IPKat is hosting the full text of this decision for your convenience: you can read it here.


Anonymous said...

There is one point that I do not understand:the second SPC has been granted on 01/13/2005 and expires on 01/30/2017.It means 12 years duration. Art.13.2 of regulation sets a limit of 5 years (amended patent valid till 01/30/2012, right, so it s within, but overall maximum protection of 15 years). Original Patent expired in 2002, so, on the basis of an amendment to this original patent, you can get a kind of 15 additional years protection of the combination (which was also protected by the original patent which expired in 2002...). Clever ever*greening where IPO recommended to the applicant to amend its original patent...

Anonymous said...

Following the post on Tuesday, 17 September 2013 "One SPC per patent again -- this time in the Netherlands", then surely this SPC is invalid, at least as far as the Dutch courts are concerned? Or am I missing something?

Anonymous said...

Boehringer was allowed to limit its patent in Germany to explicitly mention the combination product with the second SPC.

Now it will be interesting to see whether the SPC for Telmisartan+HCT will be upheld in Germany following this.

See also: http://kluwerpatentblog.com/2013/10/10/medeva-and-the-limitation-of-composition-claims/