A Supplementary Protection Certificate (SPC) is an intellectual property right available for active ingredients of human and veterinary medicinal products requiring marketing authorisation1.
The highest tribunal hearing disputes involving SPCs for EU member states is the Court of Justice of the European Union (CJEU). Historically there have been numerous referrals to the CJEU on points of law relating to SPCs and this is expected to continue. Some of the key decisions are discussed below.
The SPC regime was introduced as a mechanism to compensate patent holders for loss in effective patent term resulting from the time taken to receive marketing authorisation for such products2. However, regulatory delay is not of itself sufficient to justify the grant of SPCs.
In particular, the relevant regulation provides that an SPC can be granted only for an “active ingredient”. This has been held to exclude substances that may enable or enhance the activity of a therapeutic ingredient, but which have no therapeutic effect of their own on the human or animal body. Despite the clinical testing (and consequent regulatory delay) involved in developing such auxiliary substances, the CJEU has on two occasions3 held that they do not qualify for an SPC. Similarly, it is not currently possible to obtain SPC protection for a medical device, irrespective of whether or not the marketing of such a device has been subject to regulatory delay.
SPCs are national rights: at present there is no such thing as a Europe-wide SPC. Accordingly, individual applications must be made to national patent offices in countries where SPC protection is desired.
SPC protection is available in all EU member states, namely:
Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, and Sweden.
SPCs in these countries are governed by EC Regulation 469/2009 (“the SPC Regulation” – excerpts of which are included as Annex 1).
SPC protection is also available in the following non-EU States:
Similar provisions also exist in neighbouring jurisdictions including Russia and the Ukraine, and in other countries worldwide. Please ask your J A Kemp contact separately regarding rights in these jurisdictions.
The scope of an SPC is limited to the product of the relevant marketing authorisation. It protects that product to the same extent as the patent on which the SPC is based (“the basic patent”). For example, if the basic patent only covers a method of manufacturing or using the product, then the SPC will be similarly restricted.
Conversely, if the basic patent covers the product per se, the SPC will cover any use of the product which is approved for therapeutic use before the SPC expires. Subsequent marketing authorisations made after grant of an SPC will therefore extend the scope of the SPC, even when the later marketing authorisation is obtained by an entity unconnected with the owner of the SPC. Also, subject to the scope of the basic patent, an SPC will cover all subsequently authorised combinations of active ingredients containing the product6.
The product of the marketing authorisation has long been established to encompass therapeutically equivalent salts and esters of small molecule drugs7, provided of course that they are covered by the basic patent. The situation is less clear for active ingredients which are biological molecules. A decision of the Norwegian Court of Appeal8 following an advisory opinion of the EFTA court9 recognised that it would be desirable for therapeutically equivalent variants of a biologic product to be covered by an SPC, but provided little guidance as to the extent of such coverage. It is to be expected that this question will be referred to the CJEU.
The EU/EEA has introduced a so-called “SPC manufacturing waiver” which came into effect on 1 July 2019. It allows manufacture of medicines protected by SPCs for the exclusive purpose of export to markets outside the EEA. Stockpiling for post-expiry use in the EU/EEA is permitted within the final 6 months of the SPC term.
The waiver does not apply to SPCs which were already in force on 1 July 2019. For SPCs which were applied for before 1 July 2019 but which come into force only after that date, the waiver will be applicable but only from 2 July 2022. The waiver will automatically apply to all SPCs applied for after 1 July 2019. An equivalent waiver has been transposed in UK law (see separate section below) and applies to manufacture for export to markets outside the UK and the EEA. No waiver presently exists in Switzerland.
More information is provided in our separate briefing on the manufacturing waiver, available here.
An SPC takes effect at the end of the normal expiry term of the basic patent on which it is based, provided that the patent is maintained up to that point.
For EU/EEA member states, the SPC will expire at whichever is the earlier of:
The effective maximum term is therefore 5 years in addition to the term of the basic patent.
For non-EU/EEA member states, the term is usually determined by reference to the local marketing authorisation. For example, the term of a Swiss SPC is determined by reference to the date of the Swiss marketing authorisation. Since this can issue later than the EU/EEA authorisation, the Swiss SPC for a medicinal product may have a longer term than the corresponding SPCs in the EU/EEA countries. However, as currently transposed from the EU Regulation, the law in the UK is such that term will be calculated based on the first authorisation for the product in either the EU/EEA or the UK.
It is possible to extend the term of an SPC in the EU/EEA. the UK and Switzerland by a further 6 months by providing clinical results obtained from an agreed paediatric investigation plan (PIP). The PIP must be agreed for the relevant territory / country. The request for extension may be filed at any time up to 2 years before normal SPC expiry. Further information is provided in our briefing note on the Paediatric Products Regulation, available on request.
EU law applies in the UK until the end of the Brexit implementation period on 31 December 2020. From 1 January 2021 the Withdrawal Agreement applies. For practical purposes with SPCs, this means that the EU Regulation continues to operate for pending and granted cases filed up to 31 December 2020, including the applicability of paediatric extensions and the manufacturing waiver. However, subsequently:
Northern Ireland (NI) remains subject to EU regulatory laws, whereas the rest of the UK (Great Britain; GB) is free to diverge. Three types of marketing authorisation will be possible:
This does not mean separate SPCs. Rather, a single SPC is granted based on whichever NI, GB or UK authorisation the applicant holds when applying. If the SPC enters into force with MA covering only NI or GB, the SPC has the same geographical limit. However, up to entry into force of the SPC (i.e. expiry of the basic patent), the applicant can file additional MAs to make up a complete set and cover the whole UK. In practice, this complexity may not arise for some time. The UK medicines agency (MHRA) has provisionally indicated that it intends to recognise EMA marketing authorisations unilaterally in the UK for at least two years, post-Brexit.
Examination of SPC applications and grant in the UK will be based on the first authorisation in the UK, but the term of the granted SPC will be calculated based on the first authorisation in EU/EEA or UK. The manufacturing waiver will apply for export outside of the UK and EU, with stockpiling for sale in UK or EU permitted within the final 6 months.
The Applicant for the SPC must own the basic patent, but need not hold the relevant marketing authorisation. Thus, it is possible to secure an SPC based on a marketing authorisation held by a third party11.
An application for an SPC must be filed with the national Patent Office of the country concerned within the later of:
If the basic patent expires before marketing authorisation is achieved, it may not be possible to secure an SPC. Under such circumstances, it may be worthwhile filing an application for an SPC before expiry of the patent and following up with the marketing authorisation when it is available. However, the chances of persuading Patent Offices to grant an SPC under such circumstances would at best be uncertain12.
The requirements for grant of an SPC are set out in Article 3 of the SPC Regulation.
Although these requirements may appear relatively simple, each has been subject to multiple referrals to the CJEU. More detailed discussion is provided below.
Perhaps surprisingly, to fulfil this requirement it is not sufficient that the product is embraced by the claims of the basic patent. The CJEU has explicitly indicated that this is not an infringement test. Rather, the active ingredient must be identified in a claim of the basic patent with at least some level of specificity. A line of CJEU case law including the “Medeva”13 and “Eli Lilly”14 decisions, and more recently the “Teva”15 and “Royalty Pharma”16 decisions have addressed the Article 3(a) requirement.
The consensus is that the CJEU caselaw has arrived at a strict interpretation of Article 3(a), requiring a patent claim which focusses on the active ingredient with a high level of specificity. Unfortunately, however, despite these many referrals to the CJEU it is still not completely clear what must be done to comply with Article 3(a), in the absence of a patent claim focussed solely on the specific active ingredient (e.g. a claim to a single chemical compound, or to an antibody defined by its sequence).
In Medeva, the CJEU held that for the SPC to be granted, the active ingredient must be “specified in the wording of the claims of the basic patent”.
The decision in Medeva was made in the context of SPCs for a combination therapy. Specifically, the patent had a claim to A, which would prevent an unauthorised third party from manufacturing and selling a medicinal product containing A and another active ingredient, B. However, this was held not to support an SPC for the product A+B because B was not specified in any way in the wording of the claim.
This has generally been interpreted to mean that a patent which claims product A and does not mention combination therapies cannot support an SPC for combinations of active ingredients containing A, e.g. an SPC for A+B17, even though the claims of the patent would embrace combinations of A with any other ingredient.
A subsequent CJEU decision18 has also confirmed that a patent which claims only a combination of A+B cannot be the basic patent for an SPC for A alone, despite the fact that sale of A may well, under some circumstances, infringe the patent under “contributory infringement” provisions. This remains true even where the marketing authorisation is for a medicine comprising A and includes an indication that A may or should be used together with B.
There has been much debate over the extent to which the reasoning in Medeva and other “combination” decisions should apply to single active ingredients. Clearly the requirement that the active ingredient is “specified” will be satisfied if the basic patent contains a claim which specifically mentions the product at issue. The situation is much less clear, though, when the claims of the basic patent embrace the product at without mentioning it specifically.
In Eli Lilly, the CJEU explored this question in the specific context of a functionally defined active ingredient (“…an antibody which binds to <target>…”). It was held that a functional definition can in principle support an SPC, and an individualised disclosure is not necessary, provided that the claims when construed in the context of the description relate “implicitly but necessarily and specifically” to the active ingredient.
Although very little guidance was provided as to how to establish whether a claim meets this test, the referring UK Court19 interpreted the CJEU’s intention to be that any general claim language which covers a single active agent, including a functional definition, will satisfy the requirements of Article 3(a) for an SPC directed to that active agent. This remains the case even if there is no “individualised description” of the active ingredient elsewhere in the patent. However, claims which embrace active ingredients only by virtue of open-ended language, such as “comprises”, would not satisfy Article 3(a).
Perhaps reflecting a general frustration with the lack of clarity on this issue following Medeva and Eli Lilly, the referrals in Teva and Royalty Pharma followed20. For a detailed review of the Teva and Royalty Pharma decisions, please see our separate briefings available here and here. Collectively, these two decisions set out the following test to apply if a product is not explicitly recited in the claims:
Article 3(a) is satisfied if these conditions are met:
It remains to be seen how strictly these conditions will be interpreted, since unfortunately, the CJEU declined to provide much detailed guidance as to how the assessment should be conducted.
In Royalty Pharma the court affirmed that there is no requirement for the product to be explicitly disclosed as an individual embodiment, but went on to state that, when the product is not explicitly identified in the claims, but falls within a general functional definition, the skilled person must be able to deduce directly and unambiguously from the specification of the patent as filed that the product falls under the invention covered by the basic patent. The CJEU suggested that the provisions of Article 3(a) would not be satisfied if such a product was developed after the filing date, following an independent inventive step. This may imply that the mere existence of a later patent with more specific claims to a product (e.g. a selection invention patent) may be sufficient to exclude SPC protection based on an earlier broader patent, or at the very least that patent offices must conduct some form of assessment of inventive step when determining the validity of an SPC application under Article 3(a).
Even if the problems with such an approach are ignored, there remains a lack of clarity as to the level of precision with which the skilled person must be able to identify a particular product. The strictest interpretation here could impose a requirement that the skilled person must literally have been able to identify the precise structural and/or functional characteristics of an individual product based on the teaching of the patent at the effective filing date.
Overall therefore, the interpretation of Article 3(a) is best viewed as a spectrum, as illustrated below:
Best practice: include at least a dependent claim focused as narrowly as possible on the active ingredient.
The CJEU has confirmed that an SPC for a given product should be based on the first authorisation for a drug containing the product even if this is a combination therapy which includes the product. Thus, for example, an SPC for product A can be based on a patent claiming A and a marketing authorisation for a medicinal product containing A+B21. This may be important for vaccine products, where marketing authorisations often relate to combinations of multiple active ingredients. An SPC granted under such circumstances will cover all products containing product A approved before the SPC expires.
Article 3(d) of the SPC Regulation requires that an SPC be based on the first authorisation to place a drug on the market as a medicinal product (the earliest marketing authorisation). The proper identification of the earliest marketing authorisation may be an issue when a patent protecting a second or subsequent medical use of a particular drug is used as the basis for an SPC application.
In the Yissum decision22, the CJEU confirmed that a patent to a new medical use of a drug could form the basis of an SPC, but held that the SPC must be based on the earliest marketing authorisation for that drug, even if the earliest authorisation was for a different disease or condition from that specified in the patent. In practice, reference to the earliest marketing authorisation often meant that any resultant SPC would have a zero term, because of the maximum SPC term of 15 years from first marketing authorisation in the EU.
Many were surprised when the landmark “Neurim” decision23 introduced a more generous interpretation taking into account the scope of the claims of the basic patent. Neurim established that the first marketing authorisation under Article 3(d) was the first such authorisation falling within the limits of the protection conferred by the basic patent. This opened the door to SPCs for new uses of known drugs based on downstream patents and later marketing authorisations, provided the patent claims excluded the product as specified by earlier marketing authorisations. There was much debate over how broadly the principles outlined in Neurim should be applied, with the various national patent offices diverging to a significant extent24.
Perhaps inevitably, this led to additional referrals in “Abraxis”25 and “Santen”26. For a detailed review of the Abraxis and Santen decisions, please see our separate briefings available here and here. Santen can now be considered the leading decision. Explicitly critical of the logic in Neurim, the Santen decision effectively returns the interpretation of Article 3(d) to that of Yissum. In short:
The first marketing authorisation is the earliest marketing authorisation for the active ingredient(s), irrespective of the disease indication or any other characteristics such as formulation, dose regime or patient group.
Although Article 3(c) of the SPC Regulation suggests that only one SPC can be granted for a given product, it has long been the case that if two basic patents are owned by different Patentees, each Patentee can secure an SPC. Under such circumstances, both SPCs can be based on the same marketing authorisation.
If two patents which cover a given product are held by a single Patentee, only one SPC is available. The Patentee must choose which patent to use to support the SPC. Considerations which may apply when determining which patent to choose will include the relative vulnerability of the patents and the SPCs to any validity challenge and the duration of the SPC available from each patent.
In general, it is also possible to have multiple SPCs granted for multiple different products on the basis of the same basic patent, provided that each product is protected by the basic patent27.
An exception to this principle has however been set out by the CJEU in two cases28, both of which relate to a scenario in which an SPC has already been granted for a single active ingredient A, and a later application is filed for an SPC for a combination containing that active ingredient, A+B. The CJEU has held that the later SPC should not be granted in these circumstances.
However, the reasoning of the CJEU in both cases appears to have been influenced by a finding that the single active ingredient was the “sole” or “core” of the invention underlying the basic patent, and so they were reluctant to award a further SPC for the combination. It is unclear whether the exception would also apply if the combination represented a separate inventive advance disclosed within the same patent, or indeed if the combination had been presented in a separate patent.
Even where there is no formal mechanism to do so, most national patent offices will consider observations filed by a third party against an application for an SPC. Such observations may draw the Examiner’s attention to deficiencies in the application with respect to compliance with the substantive requirements of the SPC Regulation. Such observations may slow (or even prevent) grant of the SPC application. After grant, the validity of an SPC may be challenged in the national courts on the same grounds.
The validity of the basic patent underlying an SPC may of course also be challenged separately via all normal routes (EPO opposition, national revocation action etc.). Should the patent be revoked, any SPC or SPC application based upon it is automatically invalidated.
For the purposes of this Regulation, the following definitions shall apply:
Any product protected by a patent in the territory of a Member State and subject, prior to being placed on the market as a medicinal product, to an administrative authorisation procedure as laid down in Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use or Directive 2001/82/EC of the European
Parliament and of the Council of 6 November 2001 on the Community code relating to veterinary medicinal products may, under the terms and conditions provided for in this Regulation, be the subject of a certificate.
Conditions for Obtaining a Certificate
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:
Subject matter of protection
Within the limits of the protection conferred by the basic patent, the protection conferred by a certificate shall extend only to the product covered by the authorisation to place the corresponding medicinal product on the market and for any use of the product as a medicinal product that has been authorised before the expiry of the certificate.
Effects of the certificate
Subject to the provisions of Article 4, the certificate shall confer the same rights as conferred by the basic patent and shall be subject to the same limitations and the same obligations.
1 SPCs are also available for active substances in plant protection products, but these are not the focus of this briefing.
2 The purpose is thus similar to Patent Term Extensions (PTE) available in e.g. USA and Japan, but unlike those systems an SPC is not an extension of a patent, it is a separate right.
3 C-431/04 MIT (a bioerodible matrix) & C-210/13 Glaxosmithkline (an adjuvant in a vaccine)
4 The Brexit implementation period ends 31 December 2020.
5 Swiss marketing authorisations also automatically take effect in Liechtenstein, which unlike Switzerland is an EEA member. Thus this must be taken into account when determining the first authorisation in the EU/EEA. See comments on additional term provided by an SPC below.
6 C-322/10 Medeva, C-422/10 Georgetown and C442/11 Novartis v. Actavis
7 C-392/97 Farmitalia
8 Pharmaq v Intervet 15-170539ASD-BORG/01
9 Similar status to the CJEU for matters referred by the national courts of the EEA states: Norway, Iceland, Liechtenstein.
10 The CJEU confirmed in C-471/14 that the relevant date of an EU Marketing Authorisation is the date on which notification of the authorisation is made to the holder (typically a few days later than the Commission Decision granting the authorisation). This may result in extra days of SPC term, although some national patent offices have yet to correct the term of SPCs granted prior to the CJEU decision. A further referral (C-492/169) from the Hungarian Courts asks whether such correction is required. A hearing date has not yet been set.
11 C-181/95 Biogen V SKB explicitly endorsed this view.
12 A pending CJEU referral (C-567/16) asks the specific questions whether an “end of procedure” notice (indicates an MA is imminent) is sufficient to support an SPC and, if not, whether the absence of a full MA can be remedied later. A hearing date has not yet been set.
17  EWCA Civ 523 Medeva BV v Comptroller General of Patents
18 C-518/10 Yeda
19  EWHC 2404 (Pat) Eli Lilly
20 In fact there was also a 3rd additional referral under Article 3(a) (C-114/18 Sandoz v Hexal), but this was withdrawn before judgement. It asked whether Article 3(a) is satisfied where a product is explicitly encompassed by a Markush formula in the claims, but the particular active ingredient is not mentioned anywhere in the patent (and possesses an unusual substituent).
21 C-322/10 Medeva and C-422/10 Georgetown
22 C-202/05 Yissum
23 C-130/11 Neurim
24 A patent claim can of course be limited to exclude a marketing authorisation on the basis of characteristics other than disease indication. Some national offices applied Neurim very narrowly, such that an SPC was only granted if the excluded earlier authorisation was veterinary and the later authorisation was for a different indication in humans (the precise scenario in Neurim). Many offices applied a broader interpretation, such that the SPC was granted provided the later authorisation was for any different indication to the excluded earlier authorisation. Other offices applied Neurim very broadly, such that an SPC was granted if the later authorisation differed from the excluded earlier authorisation in any way, including e.g. formulation, dose regime or patient group.
25 C-443/17 Abraxis
26 C-673/18 Santen
27 C-484/12 Georgetown
28 C-443/12 Actavis v Sanofi, C-577/13 Actavis v Boehringer