Supplementary Protection Certificates: rectified term of protection
In its decision of 6 October 2015 (case C-471/14, Seattle Genetics), the Court of Justice of the European Union (CJEU) held that the date of expiry of a supplementary protection certificate (SPC) should be determined starting from the notification date of the first M/A in the European Union, and not starting from its date of grant.
Following this decision, the French IP Office granted SPCs with the expiry date set in relation to the notification date of the first M/A.
However, for SPCs granted prior to the Seattle Genetics decision, the French IP Office considered that it was not authorized to rectify their date of expiry to take into account the notification date of the first M/A.
In its decision of 20 December 2017 (case C-492/16, Incyte Corporation), the CJEU held that the holders of SPCs granted prior to the Seattle Genetics decision should be able to appeal for rectification of the expiry dates of those SPCs.
The French IP Office then issued a memorandum explaining how it would proceed to rectify the date of these SPCs. The French IP Office stated that:
“It will be possible for this rectification to be obtained by the SPC holder entered on the national register of patents upon the making of a simple request accompanied by a copy of the publication in the Official Journal of the notification date of the Community M/A concerned” 1.
The holders concerned will thus be able to send a letter to the French IP Office requesting the rectification of the expiry date of their SPC.
The letter will be entered on the National Register of Patents and mention thereof will be made in the Official Journal of Industrial Property (BOPI).
The website of the French IP Office will also be modified to take into account the rectified expiry date for SPCs.
The French IP Office’s memorandum mentions Community M/As only. However, it should be possible, at least under certain circumstances, to rectify the date of SPCs for which the first M/A was a national M/A.
