Patent decision
- BL number
- O/111/20
- Concerning rights in
- SPC/GB07/012
- Hearing Officer
- Mr B Micklewright
- Decision date
- 21 February 2020
- Person(s) or Company(s) involved
- Genentech, Inc. and Master Data Center, Inc.
- Provisions discussed
- Patents Act 1977 sections 117, 128B, Schedule 4A; Patents Rules 2007 rules 107, 116; Regulation (EC) 469/2009; Regulation (EC) 1901/2006
- Keywords
- Correction, Rectification of irregularities, Supplementary Protection Certificates
- Related Decisions
- None
Summary
This case concerned whether to allow a request to extend the duration of a supplementary protection certificate (“SPC”) in the name of Genentech, Inc. and whether to allow an application for a paediatric extension to the SPC. Despite the maximum term of the SPC in question being nearly four years from the date the SPC entered into force, annual fees were only paid to cover two of those years. Genentech presented their arguments on three grounds, namely that the legal framework allowed them to pay further annual fees to extend the SPC to its maximum duration when an application for a paediatric extension had been made, that in any case the application for a paediatric extension should be allowed to extend the current duration by six months, and that a request to correct the original form used to pay the annual fees should be allowed, thereby extending the duration of the SPC. Master Data Center, the company responsible for the administration of the SPC in question, made separate arguments that UK practice to allow an SPC holder to choose a duration shorter than the maximum duration was inconsistent with the relevant EU Regulations and therefore the comptroller should use rule 107 to correct an irregularity of procedure attributable to the office. The hearing officer rejected all these arguments and held that the duration of the SPC could not be extended to its maximum duration and that the application for a paediatric extension could not be allowed. The duration of the SPC in question therefore remains unchanged.
Full decision O/111/20 335Kb