The Situation: The French Intellectual Property Office ("IPO") previously refused to adjust the expiration date of a granted supplementary protection certificate ("SPCs") when it had been calculated on the date of grant of the marketing authorization ("MA"), not on the date of notification of the MA, as decided by the CJEU Seattle Genetics decision.
The Result: The French IPO has changed its stance and now extends the expiration date of granted SPCs, in compliance with the CJEU decisions in Seattle Genetics and Incyte Corporation.
Looking Ahead: French SPC owners are able to file requests before the French IPO to alter the expiration date of granted SPCs.
SPCs take effect at the end of the term of the basic patent for a period equal to the period between the date on which the application for a basic patent was lodged and the date of the first authorization to place the product on the market in the Community, reduced by a period of five years.
Determining the "date of the first authorization to place the product on the market in the Community" was the subject of much debate, until it was settled by the CJEU.
In 2015, the CJEU decided in Seattle Genetics that the date of the first authorization is not the date on which the MA was granted but the date of its notification to the patent holder, which usually takes place several days later, thus extending the SPC duration by a few days. In response to this decision, several EU Member States' intellectual property offices indicated that they would correct the calculation methods of the expiration date in cases where the application is still pending. Several offices indicated that they would also adjust the expiration date of granted SPCs.
The French IPO, however, indicated that it would use the MA's notification date to calculate the SPC's duration only going forward and for SPC applications under examination and refused to amend the expiration date of granted SPCs on the ground that, under French law, no provision would enable a change that would also affect third parties' rights. French SPC holders thus were advised to publish the notification date of the MA's grant in the national patent register to inform third parties.
This scenario was far from satisfactory, as it did not change the actual expiration date on the SPC and the Patent Register.
The French IPO should have applied the Seattle Genetics decision to granted SPCs as well because Article 17(2) of Regulation No. 1610/96...