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 24 April 2015

Questions for the CJEU? No, says court, it's too early even to ask

ViiV Healthcare UK Ltd v Teva UK Ltd [2015] EWHC 1074 (Ch), a ruling yesterday by John Baldwin QC, sitting as a Deputy Judge of the Patents Court, England and Wales, was easy to miss: there was no great fanfare of advance publicity ahead of it and, curiously, BAILII has mis-filed it in its online database under the regular Chancery Division cases and not as a Patents Court case.

Given the propensity of SPC cases to end up with references to the Court of Justice of the European Union (CJEU) for preliminary rulings, it's not surprising that ViiV, the claimant, contemplated the prospect of such a reference in this action.  Viiv however felt that it might be a good idea to start with the preliminary reference, so John Baldwin QC was called up to deal with the application for the reference even before the (in)validity of ViiV's Kivexa/Trizivir patent could be established and before a decision on conditional application to amend that patent was necessary.  Teva opposed the application for a CJEU reference and argued that, first, it was unnecessary since the questions that ViiV wanted to pose were acte clair and there was therefore no basis for referring them, and secondly that it was premature to make such a reference ahead of the making of some essential findings of fact.

Said the Deputy Judge, dismissing the application for a reference to the CJEU, not only was it too early to refer any questions to the CJEU -- it was too early even to ponder over whether the questions were indeed acte clair.  Since the decision is so short, The SPC Blog is reproducing it in full here:

  1. This is an application for a reference to the Court of Justice of the European Union (CJEU) in an action in which the Claimant (ViiV) seeks a declaration as to the proper interpretation of Article 3 of Regulation (EC) No 469/2009 (the Regulation) in the context of a Supplementary Protection Certificate (SPC) granted in 2005 in respect of
  2. "A combination comprising abacavir, optionally in the form of a physiologically functional derivative and lamivudine, optionally in the form of a physiologically functional derivative."
    It is sufficient for present purposes if the SPC wording is expressed as
    "A combination comprising A + B."
  1. The application is resisted by the Defendant (Teva) on two main grounds. First it is contended that the answers to the proposed questions are acte clair, and second it is contended that there should be no reference to the CJEU until some important essential facts have been found.

  2. The SPC was granted on the basis of EP (UK) 0817637 (the Patent), which was applied for on 28 March 1996, and a marketing authorisation ("MA") notified on 22 December 2004 for a medicinal product containing abacavir (as a sulphate salt) and lamivudine (i.e. A + B) for the treatment of HIV. The product ViiV market pursuant to this MA is called Kivexa. The language of the SPC is substantially the same as the language of claim 1 of the Patent.

  3. ViiV also market another product for the treatment of HIV. It is called Trizivir and an MA was notified in respect of this on 2 January 2001. Trizivir is a combination of abacavir, lamivudine and AZT, i.e. is a product comprising A + B + C using the short hand nomenclature. As such, Trizivir also falls within claim 1 of the Patent. However, this triple combination is also protected by claim 3 of the Patent, which is in these terms:
  4. "A combination comprising abacavir or a physiologically functional derivative thereof, AZT or a physiologically functional derivative thereof, and lamivudine or a physiologically functional derivative thereof."
  5. An MA for Trizivir was granted within 5 years of filing of the Patent and, accordingly, an SPC with a positive term has never been available based on this MA.

  6. ViiV issued proceedings for a declaration on 26 November 2014 and by Defence and Counterclaim served on 22 December 2014 the Defendant (Teva) sought revocation of the SPC. Sometime in February 2015 Teva indicated its intention to amend its Counterclaim to seek, in addition, an order revoking the patent upon which the SPC is based, and the amended version was filed and served on 8 April 2015.

  7. It is common ground that the patent revocation proceedings should progress to trial whether or not a reference is made and it is anticipated that the trial will take place in March 2016, with a Court of Appeal judgment following about a year later.

  8. The approach to references to the CJEU
  9. Article 267 of the Treaty on the Functioning of the European Union provides:
  10. The Court of Justice of the European Union shall have jurisdiction to give preliminary rulings concerning:
    (a) the interpretation of the Treaties;
    (b) the validity and interpretation of acts of the institutions, bodies, offices or agencies of the Union;
    Where such a question is raised before any court or tribunal of a Member State, that court or tribunal may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Court to give a ruling thereon.
    Where any such question is raised in a case pending before a court or tribunal of a Member State against whose decisions there is no judicial remedy under national law, that court or tribunal shall bring the matter before the Court.
  11. The CJEU's "Recommendations to national courts and tribunals in relation to the initiation of preliminary ruling proceedings" (2012/C 338/01) include the following:
  12. "The appropriate stage at which to make a reference for a preliminary ruling
    18. A national court or tribunal may submit a request for a preliminary ruling to the Court as soon as it finds that a ruling on the interpretation or validity of European Union law is necessary to enable it to give judgment. It is that court or tribunal which is in fact in the best position to decide at what stage of the proceedings such a request should be made.
    19. It is, however, desirable that a decision to make a reference for a preliminary ruling should be taken when the national proceedings have reached a stage at which the referring court or tribunal is able to define the legal and factual context of the case, so that the Court of Justice has available to it all the information necessary to check, where appropriate, that European Union law applies to the main proceedings."
  13. Over 40 years ago Lord Denning MR said in the context of Article 267 (ex Article 177) and in a section of his judgment where he set out a number of guide lines as to whether or not it was appropriate to refer a matter (Bulmer v Bollinger [1975] RPC 321, 341):
  14. "It is to be noticed too, that the word is "necessary". This is much stronger than "desirable" or "convenient". There are some cases where the point, if decided one way, would shorten the trial greatly. But, if decided the other way, it would mean that the trial would have to go to its full length. In such a case it might be "convenient" or desirable to take it as a preliminary point because it might save much time and expense. But it would not be necessary at that stage. When the facts were investigated, it might turn out to have been quite unnecessary. The case would be determined on another ground altogether. As a rule you cannot tell whether it is necessary to decide a point until all the facts are ascertained. So in general it is best to decide the facts first."
    This was said in the context of a sub-heading entitled 'Decide the Facts first' and I found it helpful to be reminded of the whole of Lord Denning's section on The Guide Lines in relation to references to the CJEU.
  1. More recently, Warren J in Eli Lilly v Human Genome Sciences [2012] EWHC 2290 (Pat) said:
  2. "107 In principle, a reference should only be made in the context of facts agreed or determined by the national court. That is, perhaps, not an entirely rigid rule in the sense the ECJ will give answers to questions on the basis of facts contained in the reference even if those facts have not yet been found. But that is an inherently undesirable procedure."
    The application of that approach to the facts
  3. The parties have cooperated in producing drafts of an Agreed Statement of Facts and of Questions To Be Referred To The CJEU. The draft Agreed Statement of Facts is not, to my mind, quite what it purports to be. Thus the last four 'Facts' are:
  4. 18 The Claimant alleges (and the Defendant disputes) that a combination consisting of [A+B] for the treatment of HIV infection was a separate innovation from a combination consisting of [A+B+C] for the treatment of HIV infection, {and/or that the use of a product consisting of A and B for the treatment of said disease constitutes part of the subject matter of the invention covered by the basic patent relied upon for the purposes of the application for an SPC,} and/or that a claim to a combination consisting of [A and B] is independently valid over a claim to a combination comprising [A+B+C].
    19. Further the Claimant has made a conditional application to amend the Patent if the Kivexa SPC would otherwise be invalid, inter alia, to include a claim to a combination consisting of [A+B], or alternatively to include a claim to a combination comprising two compounds selected from [A, B and C] provided that the two compounds are not [B and C]. The Defendant does not accept that the Claimant's proposed amendment is allowable under the relevant provisions of the EPC and national patent law. {The Claimant has also made a further conditional application to amend the Patent if the Kivexa SPC would be otherwise invalid, inter alia, to amend the claims to a combination comprising [A+B] to claims to a combination consisting of [A+B], or alternatively to include a claim to a combination comprising two compounds selected from A, B and C provided that the two compounds are not [B and C], and in each case so as to delete claims to a combination comprising [A, B and C].}
    20. The Claimant contends that, if it is necessary for it to make its application to amend the patent and the amendment is granted, the Patent as amended should be treated as the basic patent on which the Kivexa SPC application is based for the purposes of assessing the validity of the Kivexa SPC, in particular for assessing whether the requirements of Article 3(d) of the SPC Regulation have been met in relation to the Kivexa SPC. The Defendant does not accept the Claimant's contention.
    21. The Claimant contends that [A and B] in Kivexa interact synergistically with each other in the treatment of HIV infection. The Defendant does not accept this contention {and relies, inter alia, upon the facts that (i) the Claimant's predecessor in title, when applying for Kivexa's MAs, represented to the European Medicines Agency that there was no synergistic effect arising from combining [A and B] and (ii) the European Medicines Agency granted the Kivexa MAs with a Summary of Product Characteristics stating that [A and B] were additive in effect (i.e. were not synergistic).}
  5. With respect to Fact 18, Teva did not agree that the matter surrounded by {} should be included. In any event, Fact 18 is not a fact but a matter which will or may be decided at the forthcoming trial. In addition, Teva took issue with the word 'innovation' contending that it was not clear what it meant in the present context.

  6. With respect to Fact 19, Teva did not agree that the matter surrounded by {} should be included. The issue of whether any amendments are allowable on conventional grounds will or may be decided at the forthcoming trial. Moreover, at the time of the hearing before me, ViiV had two different conditional applications to amend in play. Since the hearing I was told that one of these has been abandoned and will be replaced by a further application, the object of which is to make clear beyond doubt that protection for a combination of A+B+C will, if necessary, be excised from the Patent. Teva relies on the additional uncertainty created by this state of affairs as a further reason why it is premature to consider any reference to the CJEU. ViiV contends it is merely a contingency and the CJEU should be asked to give useful guidance upon whether or not it is necessary for ViiV to amend to save its SPC.

  7. Fact 20 is not a fact at all. It relates to a topic addressed by questions 1 and 4 in the reference made in Actavis v Boehringer C-577/13 at [24] (albeit those questions were in the context of Art.3(a) and not Art.3(d)) but which were not answered by the CJEU, even though fully argued, because its answers to other questions rendered these questions academic. This failure to answer fully argued academic questions is a good indication that the CJEU is not interested in questions other than those necessary to resolve any particular case.

  8. With respect to Fact 21, ViiV did not agree that the matter surrounded by {} should be included. Again, Fact 21 is not a fact. It is more an indication of an area which will be explored at trial. In particular, it may well be relevant to explore whether A and B also interact synergistically in the presence of C, or whether C has some (and if so what) influence thereon. And it is impossible to predict now what will be the likely outcome of the debate, or even whether the question is a simple binary one.

  9. I was told that, on references to the CJEU, it was not unusual to include facts in Agreed Statements of Facts which were not actually facts but which were parties' contentions as to the facts. There may be circumstances where that is appropriate but it seems to me that such should not be the norm. The whole idea seems to be contrary to the concept that references are only made when "a decision on the question is necessary to enable [the court] to give judgment" (cf Article 267).

  10. As for the draft questions to be referred, there is presently disagreement over their form and utility but I think it is likely that matters could be resolved if I thought it otherwise appropriate to make a reference. In brief, the questions concern Article 3(d) of the Regulation and address the circumstance where there has been an earlier MA for a product consisting of A+B+C, there is a later MA for A+B and there is an SPC for a product comprising A+B. There are additional questions which depend on whether there is synergy between A and B and/or C and upon whether use of a product consisting of A+B constitutes a separate innovation (perhaps invention is a better word, ViiV was content with either, Teva with neither) from use of a product consisting of A+B+C (for treatment of the same disease). There are also questions relating to the form of the claims of the patent and the content of the SPC as well as questions similar in content (although not form) to questions 1 and 4 of Actavis v Boehringer.

  11. Article 3 of the Regulation is in these terms:

  12. A certificate shall be granted if, in the Member State in which the application referred to in Article 7 is submitted and at the date of that application:
    a) the product is protected by a basic patent in force;
    b) a valid authorisation to place the product on the market as a medicinal product has been granted…;
    c) the product has not already been the subject of a certificate;
    d) the authorisation referred to in point (b) is the first authorisation to place the product on the market as a medicinal product.
  13. With respect to the SPC in relation to Kivexa, a) is satisfied by the Patent, b) is satisfied by the MA notified on 22 December 2004, c) is true as a fact, and that leaves d). Teva contends that the MA granted in respect of Kivexa was not the first authorisation to place the 'product' in question on the market as a medicinal product. It contends that the first such authorisation was that notified in January 2001 in relation to Trizivir. Further, it contends that, in the light of the case law which has already emerged from the CJEU, the matter is acte clair.

  14. ViiV, on the other hand, submits that the matter is not so clear at all, especially in circumstances where there is 'innovation' in a combination of A+B over A+B+C, a scenario which has not previously been before the CJEU, or where there is synergy between A and B and/or C. The questions which it wishes to refer to the CJEU directly address these points and ViiV contends that the sooner this court knows the answer to those questions the better. ViiV also points to the timing benefits which will be gained if a reference is made now. It suggests that, with a reference, the proceedings will conclude at more or less the same time as the UK Court of Appeal will conclude any appeal on patent validity (end of 2016 or so), whereas if no reference is made until then, the proceedings will go on for another two years thereafter, perhaps longer. ViiV submits that the question of whether or not to make a reference is essentially one of case management and that the 'overriding objective' is best served by making a reference now.

  15. ViiV urged upon me that a reference to the CJEU would not be that expensive, that payment of any costs thrown away would not be a problem and that, bearing in mind the commercial value of Kivexa (very substantial, according to ViiV) and the timetable, a reference was justified when there was a potential for answers to the questions to be of real value.

  16. In the context of ViiV's conditional applications to amend, counsel submitted that, if the court were satisfied that the amendments were otherwise allowable (i.e. there were no valid objections on conventional grounds), then ViiV was entitled to take the position that it would amend if it was necessary to preserve the validity of the SPC but not otherwise, and that the judge would not be able to decide upon whether it was necessary for ViiV to amend without a reference to the CJEU. Accordingly, it was appropriate to make a reference now so that the judge would be equipped to deal with any eventualities.

  17. I am far from satisfied that this is the right approach to take. In effect, ViiV wishes for guidance from the CJEU upon a number of hypothetical scenarios so as to be better placed to decide whether to make any application to amend the Patent, the prime objective being to maximise the protection surrounding Kivexa whilst maintaining as wide a patent monopoly as possible.

  18. That, however, seems to me to go to desirability, and what may be desirable from ViiV's point of view may not be so from Teva's point of view (and Teva contends it is not). Moreover, the issue is not desirability from the perspective of the parties (which may or may not coincide with that of the court), but necessity from the perspective of the court.

  19. I am not satisfied that this court should make a reference to the CJEU merely to enable a party to be better informed as to whether to go forward with an application to amend its patent. That seems to me to be way beyond the ambit of Article 267 and my attention was not drawn to any authority which approved this use of the CJEU's resources.

  20. I am satisfied, however, that it is far too early to make a reference in this case, principally for the following reasons. First, if the patent is revoked at the validity trial, all questions relating to the SPC become irrelevant. Second, if ViiV's conditional applications to amend are not allowable for conventional reasons, then all questions relating thereto or contingent thereon become irrelevant. Third, if the combination of A+B is not innovative over the combination of A+B+C, then an important if not the main plank of ViiV's argument that its SPC is valid falls away and the questions in relation thereto become irrelevant. Likewise with respect to whether or not there are any synergistic interactions between A or B or C or any combination of them and if so what significance should be attached thereto. Each of these matters may or will be decided at the trial and a decision as to whether a reference is necessary cannot, in my view, be meaningfully made before that time, at least. Finally, I am not satisfied that the proposed Statement of Facts is sufficiently precise to give the CJEU a firm basis on which to make a decision. There are too many contingencies.

  21. In these circumstances I do not need to decide now whether the points ViiV wish to raise are acte clair or not. Indeed, they may never call for decision. I dismiss the application.

Thursday 23 April 2015

Pharmaq v Intervet: the story behind the case -- and a helpful explanation of its significance

Earlier this month The SPC Blog broke the news that the EFTA Court had given its ruling in Case E 16/4 Pharmaq v Intervet International BV.  Given the length and complexity of the ruling, this blogger has done his best to hide from it till such time should become available to him as to enable him to read it carefully and write it up for this weblog. Fortunately for him, no less a person than Penny Gilbert of Powell Gilbert LLP has come to his rescue with a note on the case which is agreeably accessible -- not least because Penny, together with Gunnar Meyer and Lars Erik Steinkjer (Wikborg Rein) and Ida Gjessing (Grette), represented Pharmaq in these proceedings and therefore had first-hand knowledge of the case.  This is what Penny writes:
The EFTA Court rules on the application of Articles 2, 3 and 4 of the SPC Regulation in the context of veterinary vaccine products
In a referral of questions from the Oslo District Court relating to the grant of an SPC for a veterinary vaccine the EFTA Court [equivalent to the CJEU for matters referred by the national courts of the three EFTA states (Norway, Iceland and Liechtenstein)] has held that

  • a provisional marketing authorisation properly granted under Art 26 (3) Directive 2001/82 relating to veterinary medicinal products may be the first authorisation to place the product on the market under Art 3(b) and (d) of Council Regulation 1768/92 concerning the creation of a supplementary certificate for medicinal products, so can be the basis for an SPC application.
  • a provisional permission to place a product on the market under Art 8(1) Veterinary Medicines Directive will not amount to an authorisation for the purposes of Art 3(b) and (d) provided that it has been properly granted.  Art 8(1) permissions being strictly limited to the use of immunological veterinary medicinal products , without a marketing authorisation,  in the event of serious epizootic diseases where there is an absence of suitable medicinal products and after informing the Commission /EFTA surveillance authority of the detailed conditions of use.
  • an SPC is invalid as in breach of Art 4 SPC Regulation to the extent it has been granted with wider scope “than that set out in the relevant Marketing Authorisation (“MA”)”. 
The case has been remitted to the Oslo District Court for interpretation of the EFTA Court’s judgment on the specific facts of the case.


The case before the Oslo District Court concerns the validity and scope of an SPC granted to Intervet on a Norwegian patent which broadly claims the F93-125 strain of Salmonid Pancreatic Disease (“PD”) Virus together with all strains which share “similar genotypic and/or phenotypic characteristics and react serologically [with F93-125]”, effectively the entire PD species.  The patent also claims vaccines containing inactivated PD virus.  The strain F93-125 belongs to the PD subtype SAV1, found mainly in Ireland and Scotland.

PD virus affects farmed fish (salmon and trout) and is considered to be one of the most serious fish health problems in the fish farming industry involving high mortality rates, reduced production and significant loss to the industry. PD continues to be a serious problem in Norway, where fish farming is a major industry, and fish farmers have called for better vaccines against PD to be made available to prevent the spread of the disease.

Intervet’s vaccine (Norvax) was granted an MA in 2011 for “Inactivated Salmon Pancreatic Disease Virus Strain F93-125”.  An SPC was granted by the Norwegian Patent Office in the same broad terms as the patent claims rather than reflecting the wording of the MA, in effect granting a general patent term extension. Pharmaq developed its own vaccine based on a different subtype of PD (SAV3) that it isolated from a diseased fish in Norway.  SAV3 is genetically distinct from SAV1 (and also SAV2).   In previous patent litigation before the Norwegian court Pharmaq’s vaccine was held to infringe the broad claims of Intervet’s patent and launch of the product is currently prevented pending expiry of the SPC

These proceedings relate to Pharmaq’s challenge to the validity of Intervet’s SPC on the basis of Art 2, 3 and 4 of the SPC Regulation and the following facts:

  • Between 2003 – 2011 Intervet had sold its vaccine to fish farmers in Norway under “Special Approval Exemptions” (“SAEs”) under sections 2-7 (or 2-6) of the Norwegian Medicines Regulation.
  • During this period the vaccine was also sold in Ireland under a corresponding scheme known as AR16 Licences.
  • A provisional MA was granted in the UK in 2005.
  • A full MA was first granted in the UK and Norway in 2011.
  • Total sales of Norvax in the period 2003 – 2011 amounted to well over 73 Million Euros. 
In essence, the Oslo District Court sought guidance on whether the SPC is invalid on the basis that Norvax was “placed on the market” prior to an administrative authorisation procedure within the meaning of Art 2 SPC Regulation as a result of the prior sales under the SAEs and AR16 Licences.  If not, then to the extent that the SAEs and AR16 Licences were to be considered as an “administrative procedure”, was the SPC granted in breach of Art 3 of the SPC Regulation?

The Oslo Court further asked whether the SPC was granted in breach of Art 4 SPC Regulation, since the broad wording of the granted SPC extends beyond the “product covered by the authorisation to place the corresponding medicinal product on the market”.  If so, is it invalid?

The questions referred by the Oslo District Court are set out at pages 10-11 of the judgment of the EFTA court which can be found here.

The EFTA Court judgment 

Art 2 & 3 SPC Regulation

In summary, the Court decided that the supply of a vaccine without an MA on the basis of Art 8(1) Veterinary Medicines Directive may not amount to a general placing on the market.  Article 8(1) allows the grant of provisional permission, without the same safety and efficacy testing for a full MA, to supply to the extent necessary to combat a “serious epizootic disease”, but does not entitle the producer to market the product.  Consequently, such supply does not generally constitute a placement on the market for the purpose of Art 2 SPC Regulation. 

The Court concluded that, since it does not involve an administrative procedure, a provisional permission to supply under Art 8(1), may not be considered an authorisation to place the product on the market within the meaning of Art 3(b) and (d) of the SPC Regulation. However, the grant of a provisional marketing authorisation in exceptional circumstances, under Art 26(3) Veterinary Medicines Directive does constitute an administrative authorisation for the purposes of Art 3(b) and (d) of the SPC Regulation.  Art 26(3) permits the grant of an MA, for objective, justifiable reasons, in exceptional circumstances.  Such authorisations are subject to specific procedures, including safety reporting, and also subject to annual assessment.

The Court acknowledged the dispute between the parties as to whether, in fact, Intervet had been able to place the Norvax product on the market since it had been supplied in significant quantities prior to the grant of a full MA.  The question of fact as to whether the SAEs, AR16 Licences and UK provisional MA in the present case were based on national provisions correctly implementing Art 8(1), or were based on Art 26(3) Veterinary Medicines Directive, was therefore remitted to the National Court for determination. 

The Court noted that the SPC Regulation is intended to provide an adequate period of effective protection of a basic patent, intended to compensate - at least in part - for the delay to the commercial exploitation of the invention by reason of the time elapsed between the date on which the patent application was filed and the date on which the first marketing authorisation was granted. In this case, however, the patentee was able to sell the product, at the same time as compiling clinical data for over 7 years prior to grant of a full MA.

Art 4 SPC Regulation

Art 4 provides that an SPC “shall only extend to the product covered by the authorisation” and Recital 9 of the SPC Regulation confirms that the protection granted should be “strictly confined” to the authorised product.

The Court nevertheless went on to propose that an SPC can extend to cover a specific strain of virus (included in the basic patent but not mentioned in the MA), but only if the specific strain:
  • Constitutes the “same active ingredient as the approved medicinal product”; and
  • Has “therapeutic effects that fall within the same therapeutic indications for which a MA was granted”.
By its answers to the referred questions the Court appears to have introduced a new requirement for interpreting the scope of Art 4, namely whether the same active ingredient in another, separate product would have “therapeutic effects falling within the therapeutic indication” for which the MA was granted.  This is not a phrase which is found in the SPC Regulation but derives from the CJEU’s decision in Forsgren, C-631/13.  

In Forsgren, the question was whether a patented component, Protein D - an IgD-binding protein of H.Influenzae which functioned as a covalently bound carrier protein in a vaccine, Synflorix, used against S. pneumonia, and was itself mentioned in the relevant MA - could be the subject of its own SPC. The Synflorix MA expressly stated that there was not sufficient evidence that it had any protective effect against H. influenzae. The answer from the CJEU was that an SPC could not be granted unless the patented component found in the combination product had its own “therapeutic effects falling within the same therapeutic indication” of the MA.  Thus, the issues in Forsgren were entirely different to those here: both parties’ vaccines are mono-products, not combination products, containing a single active ingredient (their respective strain of PD virus) which is not bound to any other active ingredient.

Nevertheless, the Court noted that the SPC granted to Intervet is expressly limited to the F93-125 strain. It confirmed that since an SPC can only be granted for the active ingredient  in the product which is the subject of the relevant MA then an SPC is invalid to the extent that it is granted a wider scope than set out in that MA. 
The case now returns to the Oslo District Court to decide the matter on its facts.

What next?

This case is the first occasion on which the EFTA Court has been required to interpret the SPC Regulation.  While giving guidance on the referred questions, the Court has left issues to be determined by the mational court, based on the specific facts of this unusual case. 

The case goes to trial in Oslo during late April, with the District Court having to determine whether the SAEs, AR16 Licences and Provisional MA were properly granted under either Art 8(1) or Art 26(3) Veterinary Medicines Directive and, if not, whether the SPC is therefore invalid under Art 2 or Art 3 SPC, a question of regulatory law and fact. 

Likewise the Oslo District Court must decide whether, in fact, the SPC is invalid on the basis that it extends beyond the scope of the granted MA, which is expressly limited to Intervet’s F93-125 strain.  Since the EFTA Court’s decision is not binding on the referring Court (unlike the position with the CJEU) one might also expect the EFTA Court’s assumptions, based on Forsgren, to be reviewed.

Quite how the EFTA Court’s judgment will apply to other biological products remains uncertain. However, it is expected that future referrals to the CJEU on the scope of protection of Art 4 are almost inevitable, given the importance of the market for biosimilar and biobetter products.

Monday 20 April 2015

Pharmaceutical Patent Term Extensions Forum: coming soon

C5's "14th Pharmaceutical Patent Term Extensions Forum" will be held in Munich from 22 to 23 June, followed by a Masterclass on drafting patent claims with an eye to CJEU jurisprudence on SPCs. There's a discussion of this event on the IPKat weblog, here, which indicates that there is a 10% discount on the registration fee for readers of that blog.

Tuesday 14 April 2015

No, it's not the Oktoberfest, it's an SPC seminar ...

Here's another event which readers of The SPC Blog might wish to note. With the grand title 'Quo vadis, SPC?', this is billed as an update seminar in which Dr Christopher Br├╝ckner -- the author of the SPC commentary noted here -- will speak on the the CJEU's referrals 2011-2015 and how to understand the decisions and which practical consequences we may expect for the future. Participants will receive the new second edition of Christopher's book in addition to their course documentation.

The date of this seminar is 21 October 2015 and it takes place in the lovely city of Munich (don't worry if you are travelling: Munich's famous Oktoberfest takes place in September). More information is available from the event organisers here.  Readers of The SPC Blog are entitled to a 10% discount against the registration fee (€ 981 down from € 1,090).

To register and gain the benefit of your reduced fee (valid only for registrations until 18 September 2015), just forward this blogpost to Jean-Claude Ho here, or call him, quoting "The SPC Blog" (+49 6211 500-675).

Thursday 9 April 2015

BREAKING NEWS: EFTA Court rules in Pharmaq v Intervet

The EFTA Court has just given judgment this morning in Case E-16/14, Pharmaq AS v Intervet International BV. You can read the decision in full here. It's 94 paragraphs in length and this blogger has not had the time to read it. Readers' comments are as usual very welcome.

To refresh readers' memories, the questions referred to the court for its advice were as follows:
"1. Concerning Article 2 of the SPC Regulation, has a product been placed on the market as a medicinal product in the EEA before it has been granted marketing authorisation in accordance with the procedure for administrative authorisation laid down in Directive 81/851/EEC (or Directive 2001/82/EC) when delivery of the product has taken place in accordance with 
(i) “special approval exemptions” granted by the State Medicines Agency to veterinarians and fish health biologists pursuant to Section 3-6 or 3-7 of the Norwegian Regulation of 22 December 1999, alternatively Sections 2-6 or 2-7 of the Norwegian Regulation of 18 December 2009, or

(ii) what are known as “AR 16 licences” granted by the Irish Department of Agriculture, Food and the Marine pursuant to the Irish Statutory Instrument No 144/2007 European Communities (Animal Remedies) Regulations 2007 part III “Exceptional authorisation”, point 16?
2. If question 1 is answered in the affirmative, is such a product outside the scope of the SPC Regulation and is an SPC granted on the basis of such a product therefore invalid?

3. Concerning the interpretation of Article 2 of the SPC Regulation, should a marketing authorisation granted for a veterinary medicinal product pursuant to Article 26(3) of Directive 2001/82 be deemed to constitute an administrative authorisation pursuant to Directive 81/851 (or Directive 2001/82) within the meaning of Article 2?

(a) Do special approval exemptions pursuant to Section 3-6 or 3-7 of the Norwegian Medicines Regulations of 1999 (FOR-199-12- 22-1559) or Section 2-6 or 2-7 of the Norwegian Medicines Regulations of 2009 (FOR-2009-12-18-1839) constitute valid authorisation to place the product on the market as a medicinal product within the meaning of Article 3(b)?

(b) Do special approval exemptions pursuant to Section 3-6 or 3-7 of the Norwegian Medicines Regulations of 1999 (FOR-199-12- 22-1559) or Section 2-6 or 2-7 of the Norwegian Medicines Regulations of 2009 (FOR-2009-12-18-1839) constitute a first authorisation to place the product on the market as a medicinal product in Norway within the meaning of Article 3(d)?
5. When the medicinal product is a virus vaccine, can the scope of protection under the SPC cover not only the specific strain of the virus that is included in the medicinal product and covered by the basic patent, but also other strains of the virus that are covered by the basic patent?

In answering this question, is it of significance whether
(a) such other strains have an equivalent therapeutic effect to the virus strain included in the medicinal product or whether the therapeutic effect is not immediately equivalent?

(b) a medicinal product based on such other strain will have to be the subject of a separate marketing authorisation with requirements for documentation of safety and effect?
6. If an SPC has been granted with a product definition that is not strictly limited to the specific strain of the virus authorised to be placed on the market as a medicinal product,
(a) will such an SPC be valid, or

(b) will the SPC be valid; such, however, that the scope of protection pursuant to Article 4 does not extend beyond the specific virus strain authorised to be placed on the market as a medicinal product? "
This morning the court gave its view:
"1. Under Regulation (EEC) No 1768/92, a supplementary protection certificate for a veterinary medicinal product may be granted in an EEA State on the basis of a marketing authorisation granted in that State pursuant to the administrative authorisation procedure set out in Title III of Directive 2001/82/EC, including the procedure for authorisation in exceptional circumstances under Article 26(3) of that directive. Such a marketing authorisation constitutes a valid authorisation and, where appropriate, may also constitute the first authorisation to place the product on the market as a veterinary medicinal product within the meaning of Article 3(b) and (d) of Regulation (EEC) No 1768/92.

Permissions granted on the basis of the first paragraph of Article 8 of Directive 2001/82/EC do not constitute a marketing authorisation within the meaning of Regulation (EEC) No 1768/92. That derogating provision strictly limits the use of the measures permitted under it, stating that it applies only in the event of serious epizootic diseases, in the absence of suitable medicinal products and after informing the EFTA Surveillance Authority of the detailed conditions of use.

The determination of whether “special approval exemptions” or “AR 16 licences”, granted respectively by Norwegian and Irish authorities between 2003 and 2011, and the provisional marketing authorisation granted in the United Kingdom in 2005 were issued pursuant to national provisions implementing the first paragraph of Article 8 or Article 26(3) of Directive 2001/82/EC depends essentially on the assessment of the facts in the national proceedings, which is a matter for the national court.

2. Pursuant to Article 4 of Regulation (EEC) No 1768/92, the scope of protection conferred by a supplementary protection certificate extends to a specific strain of a virus covered by the basic patent, but not referred to in the marketing authorisation for a virus vaccine relied on for the purposes of Article 3(b) of Regulation (EEC) No 1768/92, only if the specific strain constitutes the same active ingredient as the authorised medicinal product and has therapeutic effects falling within the therapeutic indications for which the marketing authorisation was granted. It is not relevant whether a medicinal product based on such other strain would require a separate marketing authorisation. The appreciation of such elements is a matter of fact which is to be determined by the national court.

A supplementary protection certificate is invalid to the extent it is granted a wider scope than that set out in the relevant marketing authorisation."

Thursday 2 April 2015

“What’s the CJEU said this time?" Seminar report

Last Thursday The SPC Blog announced the AIPPI UK's Rapid Response seminar on recent SPC rulings from the Court of Justice of the European Union, which took place just three days ago, on Monday. Well, with remarkable alacrity a report on the seminar has been prepared, thanks to Natalia Wegner-Cribbs (Carpmaels) for putting it together. The report is repeated on AIPPI’s website along with the slides here.
AIPPI Event Report: “What’s the CJEU said this time? A review of the latest SPC musings from Luxembourg

Monday night saw AIPPI’s latest event on recent SPC judgments from the CJEU, hosted by Carpmaels & Ransford LLP.  Justin Watts (AIPPI President, Freshfields) chaired the event, with insightful and topical presentations by Mike Lubienski (UCB) and Daniel Wise & Ed Oates (Carpmaels), focusing on Actavis v Boehringer (C-577/13) and Forsgren (C-631/13).  Over 70 SPC enthusiasts from across the industry attended the event, which concluded with a drinks reception providing the opportunity for a chat with the speakers and other attendees. 

Actavis v Boehringer (noted on The SPC Blog here and on the IPKat here) was discussed against the backdrop of the earlier cases in Medeva (C-322/10), Actavis v Sanofi (C-443-12) and Georgetown II (C-484/12).  In Actavis v Boehringer, an earlier SPC had been obtained for a ‘mono’ product (telmisartan), and the SPC applicant sought a second SPC based on the same patent but a later marketing authorisation to a combination product (telmisartan and hydrochlorothiazide).  According to the CJEU, the parties had agreed that telmisartan “is the sole subject-matter of the invention”, and it followed that the claim to the combination was not the subject-matter of the invention.  Based on this logic, the CJEU held that the combination SPC was invalid.  It was discussed at the event which test should be used for determining the “subject-matter of the invention”.  Must each substance in the combination product (e.g. hydrochlorothiazide), when taken in isolation, constitute the “subject-matter of the invention”, or can the combination itself be the “subject-matter of the invention” if it is inventive in its own right?  Unfortunately for patent practitioners, the CJEU never considered the second question, which asked whether it is allowable to base an SPC on a basic patent that has been amended after grant.  This question is relevant in view of European oppositionamendment practice, as well as recent CJEU case law suggesting that active ingredients must be adequately specified in the claims.  We should therefore expect questions on this point being referred to the CJEU in the future.

Forsgren (noted on The SPC Blog here and on the IPKat here) dealt with combinations of a different kind, namely where substances are present in a medicinal product not side by side but covalently linked to each other.  According to the CJEU, an active ingredient (here,protein D) can indeed be the subject of a SPC even where it is covalently linked to another substance (here, pneumococcal saccharides), but the active ingredient must produce an effect “of its own”, and that effect must be “covered” by the therapeutic indications of the marketing authorisation.  The potential practical implications of this judgment were discussed, as well as the many questions that it opens up.  What happens if the marketing authorisation is varied to include new indications?  And how does the decision align with the Plant Protection Regulation and the definition of an “active substance” in the recent Bayer CropScience case (C-11/13, noted on The SPC Blog here)? 

In summary, this was a stimulating meeting of practical relevance for those interested in SPCs.  Being the third of its kind, these rapid response SPC meetings are always well attended and have become a bit of speciality for the AIPPI UK group.