The CJEU rendered its judgement in Merck (C-125/10) in December
2011, stating that it is possible to obtain a negative term
Supplementary Protection Certificate.
The term of an SPC
The term of an SPC is laid down in Regulation 469/2009, article
13 (1), which states that the duration of an SPC is equal to the
period elapsed between the date on which the application for a
basic patent was lodged and the date of the first Marketing
Authorization (MA) in the Community, reduced by a period of five
Merck's application for an SPC was rejected by the German
authorities on the ground that only four years eight months and
sixteen days had elapsed between the date on which the patent
application was lodged and the date on which the first MA was
Enabling paediatric extension - without going all in
Merck submitted that even if the SPC cannot result in a positive
duration, it can nevertheless have a zero or negative duration,
emphasizing that an SPC is a requirement for obtaining a paediatric
extension. A paediatric extension is prolonging the patent
protection period by 6 months and can be obtained by conducting
paediatric studies and submitting the results thereof.
Accepting Merck's reasoning, the CJEU stated that a negative
term SPC can be granted. However, the CJEU further stated that the
patent holder will not be entitled to the full 6-month paediatric
extension running from the expiry day of the basic patent
The paediatric extension starts on a date to be determined by
deducting from the patent expiry date the difference between five
years and the duration of the period elapsed between the lodging of
the patent application and the grant of the first MA. In this case
a paediatric extension would thus start to run 3 months and 14 days
prior to the expiry date of the patent, thus prolonging the patent
protection period by only 2 months and 14 days.
Provided the negative duration is not more than 6 months, the
patent holder will benefit from a paediatric extension. The
possibility of having a negative-term SPC is thus clearly good news
for the pharmaceutical industry and may encourage companies to
undertake paediatric research and development to a greater
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
In a recent decision published in the Official Gazette, the General Superintendence of the Administrative Council for Economic Defense - CADE recommended the condemnation of automakers Volkswagen Brazil Motor Vehicle Industry Ltd., Fiat S / A and Ford Motor Company Brazil Ltda. by anticompetitive conduct in the domestic market of auto spare parts.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).