On 6 October 2015, the Court of Justice of the European Union (CJEU) issued a Decision in the long awaited ‘Seattle Genetics’ referral (C-471/14).
This issue was referred to the CJEU in October 2014 in Case C-471/14 (Seattle Genetics Inc. v. Österreichisches Patentamt) and related to the question what is the date of first authorisation to place the product on the market in the Community. This is a very important date as it is the basis for calculating the SPC (Supplementary Protection Certificates) term. This question led to divergence in SPC practice before various Patent Offices in Europe. Some Patent Offices held that the relevant datea was the date of the authorisation to place the product on the market. Other Patent Offices held it was the date on which the authorisation takes effect, i.e. the so-called ‘date of notification’
The CJEU have now decided that the date of the first authorisation to place the product on the market in the European Union is the date on which notification of the decision granting marketing authorisation was given to the addressee of the decision (the ‘date of notification’).
This decision is in line with the recent Advocate General’s (AG) opinion and should mean that for SPCs, where the term is less than maximum of 5 years, the term will be extended by a short time frame.
The current practice at the Irish Patents Office is to calculate the duration of an SPC based on the date of the authorisation to place the product on the market – not the now approved ‘date of notification’. This has led to many SPC applications with the Irish Patents Office being stayed pending this decision. Examination will now resume on these applications.
It is also our understanding, now that the CJEU has held that the notification date is the relevant date for calculating the SPC term, that it is the intention of the Irish Patent Office to apply the CJEU ruling to all relevant SPCs, including those already granted if they are still in force. Thus, the Irish Patents Office intends to re-issue certificates with the revised date for all SPCs that are currently in-force and those due to come into force in the future.