Georgetown: Advocate General Jääskinen advises the CJEU

The Opinion of Advocate General Niilo Jääskinen (right) in the Dutch reference for a preliminary ruling from the Court of Justice of the European Union in Case C-484/12 Georgetown University v Octrooicentrum Nederland, acting under the name NL Octrooicentrum  was posted on the Curia website this morning, but at the time of this blogpost was not yet available in English.

The referring court asked the following five questions:

"Question 1

In the situation that a basic patent in force protects several products, does regulation 469/2009 […], more specifically article 3, preamble and under c thereof, preclude the grant of a certificate for each of the protected products to the holder of the basic patent?

Question 2

If the first question is to be answered in the affirmative, how should article 3, preamble and under c of the Regulation be interpreted in the situation wherein a basic patent in force protects several products and on the date of the application for a certificate for one of the products protected by the basic patent (A), other products protected by the basic patent (B,C) have not already been the subject of a certificate, however, certificates on the applications for those products (B,C) have been granted before the application for a certificate for the first product (A) has been decided on?

Question 3

Is it important, when answering the previous question, whether the application for one of the products protected by the basic patent (A) has been submitted on the same date as the applications for other products (B,C) protected by the same basic patent?

Question 4

If the first question is to be answered in the affirmative, can a certificate be granted for a product protected by the basic patent in force, if another product protected by the basic patent has already been the subject of a certificate, but the holder of the certificate surrenders this last-named certificate with the intention to be granted a new certificate based on the same basic patent?

Question 5

Is it important, when answering the previous question, whether the surrender has retrospective effect, and is the question whether the surrender has retrospective effect determined by article 14, preamble and under b of the Regulation, or is it determined by national law? In the event that the question whether surrender has retrospective effect is determined by article 14, preamble and under b of the Regulation, should that provision be taken to mean that surrender has retrospective effect?""

As for the first question

"7. Given the jurisprudence of the Court and the Advocate General Trstenjak in the cases which gave rise to the judgments in Medeva and Georgetown University and Others, the Court is already sufficient information to respond to said first question. Thus, in this case, it is appropriate to conclude only the second to fifth questions, which are unpublished. In addition, it should be noted that these four questions were asked by the court only if the answer to the first question is yes, which is the premise presented in 1 of these conclusions".

The Advocate General has advised the Court to rule as follows (thanks to Google Translate):

"I propose that the Court reply as follows to the second to fifth questions referred by the Court in 's-Gravenhage (Netherlands)

(1) A waiver of the supplementary protection certificate is governed by Article 14 b) of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for drugs, not by national law. In addition, when such waiver is effective only for the future, it may not subsequently be admitted that, as a result of such waiver, the product in question had never been to a certificate within the meaning of Article 3 c) of that Regulation.

(2) In the event that an applicant has filed several supplementary protection certificate for separate products but covered by the same patent, it is up to him to decide which of these applications is a priority. In the absence of choice, it is up to national authorities to draw the consequences under national law".

Watch this space for comment and analysis, which is bound to be forthcoming.