Patent decision

BL number

O/580/18

Concerning rights in

EP(UK)0736030B1 SPC/GB06/007

Hearing Officer

Dr L Cullen

Decision date

19 September 2018

Person(s) or Company(s) involved

Merck Sharp & Dohme Corporation

Provisions discussed

Patents Act 1977, Sections 73(1A), 76(3) Regulation (EC) No. 469/2009, Article 17

Keywords

Revocation, Supplementary Protection Certificates

Related Decisions

OPINION 9/16+10/16

Summary

Revocation of EP(UK) 0736030 B1 was initiated by the Comptroller under Section 73(1A) in light of the outcome of combined Opinion 09/16 + 10/16 (issued on 31 May 2016).

The patent holder filed amendments in response. The Comptroller was satisfied that the proposed amendments distinguished the claimed invention from the cited disclosure. The specification was allowed to be amended as proposed, and no order was made for revocation of the EP(UK) patent.

UK Supplementary Protection Certificate (SPC), SPC/GB06/007 relies on EP(UK) 0736030 B1 as basic patent. The Comptroller found that the product for which SPC/GB06/007 was granted (posaconazole) continues to be protected by claim 1 of the patent, as amended. Thus, it was not necessary to publish an official notification under Article 17, in so far as it relates to Article 15, of Regulation (EC) No. 469/2009.

Full decision O/580/18 142Kb