Patent decision

BL number

O/229/02

Concerning rights in

SPC/GB/96/030, SPC/GB/96/031, SPC/GB/96/032, SPC/GB/96/033, SPC/GB/96/034, SPC/GB/96/035

Hearing Officer

Mr R Walker

Decision date

31 May 2002

Person(s) or Company(s) involved

Takeda Chemical Industries Limited

Provisions discussed

Article 3(c) of Regulation (EEC) No. 1768/92; Article 3(2) of Regulation (EC) No. 1610/96

Keywords

Supplementary Protection Certificates

Related Decisions

[2002] UKIntelP o00202

Summary

An appeal on the related decision resulted in the cases being referred back to the Patent Office to decide matters relating to Article 3 of Regulation (ECC) No. 1768/92, which were left undecided by the hearing officer in that decision. The earlier decision and the present one related to six requests for supplementary protection of three different combinations of active ingredients. Three of the requests, each for one of the three different combinations, designated a first patent. The other three requests, each for one of the same three different combinations, designated a second patent.

The hearing officer considered what the European Court of Justice had meant in its judgement in Biogen Inc v Smithkline Beecham Biologicals SA [1997] RPC 23, by the statement “Under Article 3(c) of the Regulation, however, only one certificate may be granted for each basic patent.”. The hearing officer concluded that this statement could not be taken at face value and that the Court had intended that if a patent holder has more than one patent for the same product, he should not be able to obtain more than one certificate for that product. He also concluded that when deciding whether the present requests were allowable, he should consider not only the explicit condition of Article 3(c) but also the additional, implicit condition which emerges from a consideration of the principles underlying Regulation (ECC) No.1768/92 and which is made explicit by article 3(2) of Regulation (EC) No. 1610/96. These two conditions were:

a. a certificate shall not be granted for a product if at the date of application for the certificate, the product has already been the subject of a certificate; and

b. the holder of more than one patent for the same product shall not be granted more than one certificate for that product.

Applying these conditions to the six requests the hearing officer decided that only one certificate for each of the three different products could have been granted if all six requests had not already been rejected in the earlier decision.