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 16 February 2012

France: Cour de Cassation upholds rejection of SPC for Benoxacor and (S)-metolachlor.

From Edouard Kling and his colleague François Pochart (of the Paris-based international practice of august & debouzy avocats) comes this fascinating news of a recent decision of the French Cour de Cassation -- its Supreme Court. Edouard writes:
"Here is a link to a ruling of the French Supreme Court for your blog which may have remained unnoticed among the various Medeva and Queensland discussions. This ruling is concerned with SPC Regulation 1610/96.

The Cour de Cassation confirmed the decision of the Cour d'Appel to reject SPC application No 02C0020 directed to a mixture of Benoxacor and (S)-metolachlor. It came to the conclusion that the product was already the subject matter of a previous SPC (No 97C0048 based on a different basic patent), though the former SPC did not specify the stereochemistry of the metolachlor component. Said the Cour de Cassation
“Whereas, first, the Cour d'Appel decision found that SPC no. 02C0020 was requested for a plant protection product whose active substance is the combination of benoxacor and S-Metolachlor and that SPC no. 97C0048 granted previously on the basis of patent no. 84810599 covers the combination of benoxacor and metolachlor without reference to one or more specific spatial forms of metolachlor; it further pointed out, on specific and adopted grounds, that the metolachlor molecule has two R and S enantiomers and four possible spatial forms, and that S-Metolachlor is only one enantiomer of the metolachlor substance; finally, it pointed out, on valid grounds, that it is not demonstrated that the transition of the active substance in question, from a racemic form to an enantiomer form, implies that the product has a different activity profile; from these findings and assessments, the Court of Appeal, which carried out the study referred to in the second part of the argument, was able to infer that the combination of benoxacor and S-Metolachlor constituted the same active substance as the combination of benoxacor and metolachlor since it was composed of the same sequence of atoms and, thus, one and the same product within the meaning of Articles 1. 3, 1. 8 and 3 of EC Regulation 1610/96”
This ruling may be related to the different European Escitalopram decisions dealing with the definition of a product under the scope of medicament SPCs, i.e. the Austrian and German decisions you have posted earlier. It however remains unclear about the burden, requirements and means left to the patentee to demonstrate an improved profile".
Edouard and François look forward to providing readers of this weblog with a complete translation as soon as possible.

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