In July 2013 the European Court of Justice (ECJ) issued an important judgment regarding the interpretation of Articles 27 and 70 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

In its judgment, the ECJ first confirmed its jurisdiction and competence to interpret Article 27 of TRIPs, on the following grounds:

"Consequently, as the Commission observes, to regard the rules on patentable subject-matter in Article 27 of the TRIPs Agreement as falling within the field of the common commercial policy rather than the field of the internal market correctly reflects the fact that the context of those rules is the liberalization of international trade, not the harmonization of the laws of the Member States of the European Union.

In the light of the above considerations... Article 27 of the TRIPs Agreement falls within the field of the common commercial policy."

The ECJ then referred to Article 167, paragraphs (2) and (5) of the European Patent Convention (EPC) regarding reservations, according to which some EPC member states postponed the patentability of pharmaceutical products until October 1992. In this regard, the ECJ specifically emphasised that the effects of the reservation endure throughout the entire life of a European patent, and held that "it cannot be considered that the protection of existing subject-matter referred to in Article 70 of the TRIPs Agreement can consist in attributing to a patent effects which it does not have and never has had".

Finally, the ECJ made clear that under no circumstances do Articles 27 and 70.2 of TRIPs oblige World Trade Organisation member states to provide for the conversion of pharmaceutical process patents (Article 167 of the EPC) into product patents protecting drugs as such. According to the ECJ, such an obligation cannot be derived from Article 70.2 of TRIPs and would go beyond the ordinary meaning of the term "existing subject matter".

On those grounds, the ECJ ruled as follows:

"A patent obtained following an application claiming the invention both of the process of manufacture of a pharmaceutical product and of the pharmaceutical product as such, but granted solely in relation to the process of manufacture, does not, by reason of the rules set out in Articles 27 and 70 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, have to be regarded from the entry into force of that agreement as covering the invention of that pharmaceutical product."

For further information on this topic please contact Sara Pelaz at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email (s.pelaz@gba-ip.com).

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