Further to their preliminary ruling (our analysis of which can be found at http://www.wpt.co.uk/resources/news/are-multiple-spcs-per-patent-allowed), the recent decision of Georgetown University v Octrooicentrum Nederland (case C-484/12) has confirmed that the holder of a patent that protects several products can obtain SPCs for each of the products based on the one patent.
Georgetown University owned a patent that protected both individual HPV proteins and combinations thereof. Based on this patent and marketing authorisations for the combinations, Georgetown University applied for SPCs for the individual HPV proteins as well as for the combinations. The SPCs for the combinations were allowed, but an SPC for an individual protein was rejected, as it was suggested that only one SPC may be granted for each basic patent under Article 3(c) of the SPC Regulation (Regulation No 469/2009).
The Court held that the basic patent protected both the combinations of the proteins and the proteins individually, within the meaning of Article 3(a) of the SPC Regulation. An SPC could therefore be granted for both the individual proteins and a combination thereof, based on the patent and a marketing authorisation for the combination. It was pointed out that even if the scope of these SPCs overlapped, they would in principle expire on the same day.
However, one of the individual proteins was also present in another medicinal product, which was the subject of a subsequent marketing authorisation. It was held that Article 3(c) did prevent this second marketing authorisation from providing basis for a second SPC for the individual protein, in addition to the first SPC based on the first marketing authorisation.
It was also noted that SPCs extend the protection provided by the basic patent after its expiry. If the patent holder could oppose the use of a medicinal product containing his protected product based on the patent when in force, the SPC must extend this right.
It was therefore decided that Article 3(c) of the SPC Regulation would not preclude a patent holder who has obtained an SPC for a combination of active ingredients protected by a basic patent from obtaining another SPC for an individual active ingredient that is also protected by the basic patent. In view of this decision, the remaining questions that were referred did not require an answer.
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