In the
The correct fee for an SPC in the
The question of whether this could be corrected reached the
Some background on the law regarding SPCs
An SPC is a form of intellectual property that extends a patent term in respect of pharmaceutical or plant protection products in qualifying circumstances, for up to a maximum duration of five years. SPCs are governed by EU regulation - for pharmaceuticals this being Regulation 469/2009 (the "SPC Regulation") - and national implementing legislation. They may be sought from and granted by national intellectual property offices on a state by state basis.
Further, Regulation 1901/2006 (the "Paediatric Regulation") enables a six month extension of an SPC where necessary paediatric studies have been undertaken.
A granted SPC is therefore a national right, albeit governed in part by EU legislation. Certain requirements on procedural aspects, such as the payments of fees, are left to national law.
The judge summarised the key legal provisions as follows:
- EU Member States can decide whether or not they want to require up front application fees and/or annual fees for SPCs and if so in what amount (Articles 8(4), 12, 19 of the SPC Regulation);
- The duration of an SPC is determined by Article 13 of the SPC Regulation, and the situations in which an SPC may lapse is determined by Article 14;
-
In the
UK , an SPC does not take effect unless the relevant fees are paid in time. By "in time" the judge was referring to the prescribed period which starts 3 months before the start date of the SPC and ends at the start date of the SPC (if the certificate is granted before that 3-month period, which it usually will be) or in the 3 months period beginning when the SPC is granted (if the certificate is granted later) - paragraph 5A of Schedule 4A of the Patents Act 1977 (the "Act") and rule 116(2) of the Patents Rules 2007 (as amended) ("Patents Rules"); - The relevant payment is the "prescribed fee", which is determined by rule 6(2) of the Patents (Fees) Rules 2007 (as amended) ("Patents (Fees) Rules"). The prescribed fee is calculated according to when the certificate expires relative to the start date. It is paid once and not every year;
- The comptroller has to send a notice to the applicant containing certain information (including "the prescribed fee due") (rule 116(4) Patents Rules);
- The prescribed fee must be paid and accompanied with Patents Form SP2. Once the certificate has taken effect no further fee may be paid to extend the term, unless an application for an extension is made under the Medicinal Products Regulation (rule 116(5) Patents Rules); and
- If the fee is not paid when it should be, the comptroller has to send a reminder within 6 weeks of the end of the relevant period (rule 116(6) Patents Rules).
Rule 6 of the Patents (Fees) Rules provides that the fee payable is:
Where the certificate expires during the period of one year beginning with -
- the start date, the fee is Ł600;
- the first anniversary of the start date, the fee is Ł1,300;
- the second anniversary of the start date, the fee is Ł2,100;
- the third anniversary of the start date, the fee is Ł3,000; or
- the fourth anniversary of the start date, the fee is Ł4,000.
What had happened with
On
"The maximum period of duration of the certificate in accordance with Article 13 will expire on
- for first year or part thereof Ł600
- for second year or part thereof Ł700
- for third year or part thereof Ł800
- for fourth year or part thereof Ł900
- for fifth year or part thereof Ł1000"
MDC proceeded to inform the
The
The arguments and outcome in the Patents Court
MDC complained that the
MDC argued that the Hearing Officer had fallen into error by interpreting the SPC Regulation as allowing an applicant for an SPC to choose a duration of their certificate for a period that is shorter than the maximum term.
The judge however agreed with the
In reaching this conclusion, the judge considered the
MDC tried to argue that this statement was obiter and not binding but the judge did not agree. He held that it makes clear that the fees set out in rule 6 are annual fees, payable upfront and concluded that:
- if the prescribed fees are annual fees, then it must be open to a patentee to elect to pay only for a period he desires;
- it therefore was and is open to the UKIPO to give an applicant the option to pay for a period shorter and only in respect of the years selected;
- having the alternative option to surrender, does not affect that conclusion;
-
although the
UK is unique in its approach, this does not affect this conclusion; and - there was therefore no irregularity for the purpose of rule 107.
Finally, in a separate judgment ([2020] EWHC 601 (Ch)) the judge refused permission to appeal to both MDC and
Conclusion
SPCs can be the most valuable form of intellectual property protection for an invention. Administrative formalities therefore warrant very careful management by individuals who are fully informed of the relevant national rules and procedures, which differ between the different countries within the SPC regime. In the
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