Exotic priority

Today’s post will be quite exotic. All right, let’s not overpromise; not quite Seychelles-exotic. But exotic nonetheless, for this blog at least.

For starters, the decision reported on was brought to my attention by my German colleague Frank Steinbach, from the law firm Zimmermann & Partner. Besides, the decision is a judgment issued by the General Court of the European Union, further to an appeal against a decision by a Board of appeal of the EUIPO (European Union Intellectual Property Office).

Not exactly my comfort zone, and yet this decision does belong on this blog. As you will see, it also has a strong patent law flavor.

Here are the – highly unusual – facts of the case.

On October 26, 2017, the German company The KaiKai Company Jaeger Wichmann GbR (hereafter KaiKai) filed a PCT application No. PCT/EP2017/077469 on a sports device for supporting a handlebar for performing push-ups. Approximately one year later, on October 24, 2018, KaiKai filed a multiple community design application for 12 designs, on a sports device, claiming the priority of the PCT application.

The EUIPO examiner refused to acknowledge the priority right, as the community design application was filed after the expiry of the 6-month priority community design deadline. The applicant requested an appealable decision, which was issued on January 16, 2019. KaiKai filed an appeal, and the decision was issued on June 13, 2019 by the Board of appeal of the EUIPO.

At this point, let’s marvel for a moment at the swiftness of soft IP procedures. For a patent person, it looks almost preternatural.

Anyway, the Board agreed with the examiner and rejected KaiKai’s appeal. KaiKai did not waver and filed a further appeal in front of the General Court of the European Union, which gave rise to the decision commented upon today.

Is this a sports-related patent application or design right application?

Before we continue, we should probably have a look at the relevant legal provisions, both in the Paris Convention and in Council Regulation (EC) No. 6/2002 of December 12, 2001 on Community designs (the Community design regulation).

Let’s start with Article 4.A.(1) of the Paris Convention:

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

The periods in question are specified in article 4.C.(1):

The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.

But then article 4.E.(1) contains the following specific provision:

Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs.

Turning next to the Community design regulation, the relevant part is article 41(1):

A person who has duly filed an application for a design right or for a utility model in or for any State party to the Paris Convention for the Protection of Industrial Property, or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application.

It is important to note here that article 41 does not mention the possibility to claim priority from a patent application, only from a utility model application.

The Board of appeal of the EUIPO held that article 4 of the Paris Convention applies to the European Union, via the TRIPS agreement. However, the Board added that there is no primacy of the Paris Convention over the Community design regulation, since the latter is not a “special agreement” as provided in article 19 of the Paris Convention.

The Board then held that article 41 of the Community design regulation unambiguously sets a 6-month priority deadline from the first filing, which can be an application for a design right or a utility model.

Referring to the Guidelines for examination of registered Community designs (section 6.2.1.1), the Board found that it is not possible to claim priority from a patent application. However, a PCT application can be considered as a utility model application, by virtue of article 2.(i) PCT: “references to an ‘application’ shall be construed as references to applications for patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition“. Therefore, according to EUIPO practice, claiming priority to a PCT application is allowed. But then, it is considered as an application for a utility model, so that the 6-month priority deadline must be observed.

The Board finally added that this is consistent with article 4.E.(1) of the Paris Convention, which provides a 6-month priority deadline when an industrial design application claims priority to a utility model application.

In front of the General Court, KaiKai criticized the Board’s reasoning as follows:

  • Article 41 of the Community design regulation does not explicitly handle a priority claim to a PCT application.
  • Therefore, the Paris Convention should be applied, and more specifically article 4.C.(1) which provides a 12-month priority deadline for patent applications.
  • Indeed, a PCT application cannot only be considered as a utility model application.

What was the General Court take on this?

As a first step, the General Court approved the EUIPO and the Board for acknowledging that a Community design may claim priority to a PCT application despite the absence of mention of patent applications in article 41 of the Community design regulation.

Indeed, a PCT application can, in some contracting states, be considered as a utility model application. Says the court (my own translation, since the ruling is available in many languages but not in English):

In these circumstances, in order not to unjustifiably exclude some of the utility model applications, the EUIPO’s extensive interpretation allows all international patent applications filed under the PCT to be accepted as a basis for a right of priority, thus avoiding impeding the legal protection of industrial property rights covered by the PCT. While international patent applications may thus give rise to a priority right for designs under Article 41 of Regulation No 6/2002, however, this does not necessarily transform patent applications into model utility applications or automatically subject them to the rules designed for them.

As a second step, the court noted that article 41 of the Community design regulation does not contain any provision on the priority deadline for a priority claim to a patent application.

Looking at the Travaux préparatoires and at the wording of article 41 itself, the court found that the purpose of this article was to conform to the rules of the Paris Convention and the TRIPS agreement. Therefore the Paris Convention should be taken into account when interpreting article 41 of the Community design regulation. The court added that this is not really a matter of primacy of the Paris Convention over the regulation, but rather a matter of filling a gap in the regulation owing to the Paris Convention.

This led the court, as a third step, to look more closely at the articulation between article 4.C.(1) (12-month priority deadline related to patent and utility model application filings) and article 4.E.(1) (6-month priority deadline for an industrial design claiming priority to a utility model application filing) of the Paris Convention:

It follows from the logic inherent in the priority system that, as a general rule, it is the nature of the earlier right which determines the duration of the priority period. In this regard, it should be noted that the reason why […] the priority period applicable to patents and utility models is longer than that applicable to designs and trademarks results from the more complex nature of patents and utility models. In fact, given that […] the procedure for the registration of patents or utility models is longer than that of designs or trademarks, the priority right resulting from the filing of a patent or utility model application would run the risk of expiring if the same relatively short period of six month was applied to all rights that could give rise to a right of priority. However, the advantage that the right of priority is supposed to provide is to allow the applicant to assess the chances of obtaining protection for the invention concerned on the basis of the earlier patent application filed in a state before possibly seeking, by a subsequent application, to obtain protection in another state by carrying out the necessary steps and preparations and by setting out the costs and formalities relating thereto.

[…]

In addition, it appears consistent that the nature of the earlier right determines the duration of the priority period, since […] it is the application for registration of this earlier right which gives rise to the right of priority. Furthermore, it is from the date of filing of the said application that the priority period begins to run. If the actual birth of the right of priority as well as the start of the period of said right depend on the earlier right and the application for its registration, it is logical that the duration of the right of priority also depends on the earlier right.

The court also reviewed the Travaux préparatoires of the Paris Convention which seem to confirm this view.

But then how should we deal with article 4.E.(1)? Well, the court interpreted this article as being a specific, exceptional provision – based on a textual analysis of the article and based on a historical analysis of the adoption of the article. They considered that the reason for the exception was the short registration procedure for utility models. In particular, utility models are generally published before the 12-month milestone – but patent applications are not:

[…] the objective behind Article 4, Section E, paragraph 1 of the Paris Convention does not concern patent applications. Indeed, the risk of a long-published patent being re-filed as a design is almost non-existent, as is confirmed by the present case […]. 

This finally brings us to the court’s conclusion:

It must be noted that the arguments that the EUIPO puts forward in support of the contrary position are not such as to call into question the conclusion that the general rule underlying the Paris Convention is that the nature of the earlier right is decisive for determining the duration of the priority period. In particular, the EUIPO does not make any argument that could establish that the special rule created for utility models should also apply to patents.

Consequently, it must be concluded that the Board of Appeal erred in considering that the time limit applicable to the claim by the appellant of the priority of the international patent application PCT/EP2017/077469 for all twelve designs for which it applied for registration was six months.

Congratulations to Frank and his colleagues, for this nice result! The matter may still be referred as a last stage to the highest level, namely the Court of justice of the European Union – wouldn’t it in fact be surprising if this were not the case?

Now, assuming that this ruling holds, how far-reaching is it? Is it now possible to file a Community design, claiming priority to a patent application other than a PCT application, within a 12-month deadline? This is actually not so clear based on the judgment.

Indeed, the court seemed to approve the EUIPO’s practice to consider a PCT application to be a proper basis for a priority claim by a Community design, because a PCT application can also be considered as a utility model applications. If this is so, the reasoning would not necessarily extend to other patent applications (for example to a direct European application, or a national application). And yet, a patent application is a patent application, PCT or no PCT…

Furthermore, it seems somewhat far-fetched to consider that priority based on a PCT first filing may be claimed because said first filing is (at least virtually) a utility model application, but then, for the purpose of computing the deadline, to consider this first filing as a patent application, and thus to skip article 4.E.(1) which sets a special rule for claiming priority to a utility model application.

Wouldn’t things be more consistent if all patent applications gave rise to a 12-month priority right for design rights, based on articles 4.A.(1) and 4.C.(1) of the Paris Convention? This would require taking the “filling the gaps in the regulation” approach one step further. Would it be one step too far for the Court of justice?

Let’s stay tuned!


CASE REFERENCE: General Court of the European Union, April 14, 2021, The KaiKai Company Jaeger Wichmann GbR v. EUIPO, T-579/19.

Betting the farm on inventive step

After several posts dealing with the intricacies and oddities of SPC law, I thought we might as well take a break, look at a simple, straightforward case for a change – yes, there are some – and get a post completed in fewer than 1,500 words .

I don’t know whether this will be a breath of fresh air, but the patent in suit, EP 0899518, relates to a ventilation system for a building containing (especially porcine) livestock.

The patent proprietor, I-Tek, based in Saint-Malo, sued Heughebaert Danièle et Philippe, in Evreux, for alleged infringement of the patent. Bretons and Normans: little wonder this got contentious.

In November 2018, the Paris TGI granted the defendant’s invalidity counterclaim and revoked claims 1-4 of the patent for lack of inventive step. I-Tek appealed, so that the issue was revisited by the Paris Cour d’appel.

Here is claim 1:

Ventilation system for a building containing at least one row of compartments intended to be occupied by at least one animal, the said system including at least one air intake interconnecting, beneath the said compartments, with lower intake apertures for each of the shafts, at least one air outlet in the said building connected to air suction devices intended to create negative air pressure inside the building so as to provide for the suction through the said shafts of air let in through the said or each inlet, the said or each air outlet being positioned above the said compartments, an outlet aperture from each shaft being positioned beneath a ceiling of the said building and each shaft being fitted with means of regulating the velocity of the air sucked through its outlet aperture to a set value so that the said value provides for ventilation of the said ceiling above each shaft, the system is characterized in that the outlet aperture from each shaft is located appreciably above the floor.

The court started with recalling that the question is whether

[…] taking into account the state of the art, the skilled person, in view of the problem that the invention purports to solve, would achieve the technical solution claimed in the patent using their professional knowledge and making simple operations. Inventive step is defined relative to the specific problem with which the skilled person is confronted.

A less intensive form of farming not requiring any ventilation system.

The court added:

The closest prior art to be selected must be relevant, i.e. it must correspond to a similar use and require the minimum of structural and functional modifications to achieve the claimed invention. This closest prior art must therefore aim at reaching the same objective or achieving the same effect as the invention or at least belong to the same technical field as the claimed invention or a field which is closely related. 

Most readers have probably recognized an almost verbatim quote of the EPO’s case law and guidelines on the problem and solution approach.

The next sentence in the judgment is thus somewhat surprising:

Article 56 EPC does not necessitate, in order to determine if a patent involves an inventive step, to proceed according to a problem and solution approach requiring first defining a closest prior art […], as this is specific to the EPO’s Boards of appeal and is not mandatory for French courts.

There is some contradiction here, but I think the message may be: please do not tell us what we should do; but we will do it anyway.

The court then identified three relevant prior art documents, designated as G, D and S.

Document G discloses a ventilation system according to claim 1, except that it fails to disclose that each shaft is fitted with means of regulating the velocity of the air sucked through its outlet aperture to a set value.

Document D discloses a ventilation system for avian livestock comprising lateral active air inlets equipped with closing means adjusting the air inflow rate to a constant value, based on measurements made by a detector.

Document S discloses a ventilation system for porcine livestock including an axial shutter and shafts having motor-controlled openings.

The court identified G as the closest prior art, which confirms that they did apply the problem and solution approach.

The problem to be solved, they said, was the provision of a ventilation system comprising shafts and air flow regulation means, to achieve good ventilation of the entire building. This formulation could be criticized as already containing a pointer to the solution – but I am not persuaded that this really had a bearing on the outcome.

The important point, I think, is that the court found that documents D and S were combinable with G, “by simple technical operations and based on common general knowledge“.

It seems that I-Tek argued that document D would not have been taken into account as the regulation of air flow is different in this prior art. In particular, the air flow is horizontal in D but vertical in G (and the claimed invention). The court disagreed. They concluded that claim 1 corresponds to a mere juxtaposition of known means, not to an inventive combination having a novel function – thus confirming the findings of the court below. Dependent claims 2-4 shared the same fate as claim 1.

Interestingly, the patent was opposed at the EPO by another third party, more than fifteen years earlier.

The opposition was quite minimal, and it was rejected without oral proceedings. Document G was also considered as the closest prior art in the opposition decision but another document was cited as a secondary reference instead of D and S. The opposition division held that the skilled person starting from G would not achieve the claimed invention as this secondary reference did not teach the distinguishing feature.

The court therefore simply discarded this decision by noting that the opposition division was not presented with prior art D and S. Based on a very quick look at the documents, it does seem that D may indeed be more relevant than the secondary reference filed by the opponent at the EPO. The latter mentions some regulation means but D seems more specific in that it calls for a regulated constant air flow.

In my opinion this decision is an illustration of how flexible the problem and solution approach can be.

Criticisms have been raised against the problem and solution approach over time, including on this blog. But I would submit that the unconvincing inventive step reasonings that we sometimes see in EPO decisions are not really due to the approach itself, but rather to an objectionable, sometimes overly rigid, application of the approach.

In this respect, the selection of the closest prior art and the formulation of the objective technical problem are more often than not hotly debated.

But let’s not forget the third stage of the approach, namely the appraisal of (non-)obviousness, which probably gives the most leeway to the deciding body.

Case in point: for a narrow-sighted skilled person, the airflow rate regulation means of document D would not be obvious to incorporate into the ventilation system of the closest prior art G, as the positioning of the openings and direction of airflow are different. But if the skilled person has just a little bit more imagination, then the modification of the closest prior art becomes perfectly obvious.

In summary, IP courts have full discretion in deciding how high or low the inventive step bar should be, even if they follow the problem and solution framework, which can thus be viewed, at its core, as a convenient common language for the entire European patent profession.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, January 19, 2021, I-Tek v. Heughebaert Danièle et Philippe, RG No.18/28089.

Third time’s not a charm

Welcome to the third and final part of the SPC drama miniseries on Patent my French, still courtesy of guest blogger Lionel Vial.

Spoiler alert: I would never have thought that the fate of an SPC application would be at least partly decided based on a number of bibliographic citations – and yet…

The Easter egg which was missing from the latest post has finally been found again.

The last of the three decisions we discuss today was rendered by the Paris Cour d’appel on February 9, 2021 following an appeal against a decision of the French patent office (INPI) to refuse SPC application No. FR16C1004.

The SPC application was filed by Wyeth and the General Hospital Corporation on the basis of European patent No. EP 1848414 filed on February 2, 2006 and of marketing authorization (MA) No. EU/1/16/1086 granted in 2016 to Astrazeneca for Tagrisso® (osimertinib mesylate).

Tagrisso® is indicated for the treatment of adult patients with locally advanced or metastatic non-small cell lung cancer (NSCLC) with activating epidermal growth factor receptor (EGFR) mutations (i.e. mutations of EGFR which cause cancer), and in particular for treating those patients who harbor a T790M mutation-positive EGFR (i.e. the amino acid threonine (T) in position 790 of the EGFR is substituted by a methionine (M)).

Osimertinib

Osimertinib is a Tyrosine Kinase Inhibitor (TKI) which irreversibly inhibits EGFRs harboring sensitizing-mutations (EGFRm) (i.e. mutations causing cancer) and the TKI-resistance mutation T790M.

Astrazeneca obtained an SPC for osimertinib on the basis of the MA and of European patent No. EP 2736895 filed on July, 25, 2012, which claims osimertinib as such.

The SPC application of Wyeth and the General Hospital Corporation was based on claim 23 of the basic patent which relates to a pharmaceutical composition for use in treating cancer in a subject with a cancer having a mutation in EGFR, wherein the mutation is a substitution of a methionine for a threonine at position 790; and wherein the pharmaceutical composition comprises an irreversible EGFR inhibitor.

Claim 24, which depends from claim 23, further gives a list of irreversible EGFR inhibitors: EKB-569, HKI-272 and HKI-357, which are structurally related to gefitinib, an EGFR inhibitor sensitive to the T790M mutation.

The SPC application was refused by the INPI on August 1, 2019 pursuant to Article 3(a) of Regulation (EC) No. 469/2009 (hereafter the “SPC regulation”). The INPI in particular considered that while the claims of the basic patent did implicitly and necessarily relate to osimertinib, they did not specifically relate to it, since osimertinib was neither mentioned in the specification of the patent nor identifiable as such.

The Cour d’appel essentially based its reasoning on the judgement handed by the CJEU on April 20, 2020 in case C‑650/17 (Royalty Pharma):

1. Article 3(a) of Regulation (EC) No. 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products must be interpreted as meaning that a product is protected by a basic patent in force, within the meaning of that provision, if it corresponds to a general functional definition used by one of the claims of the basic patent and necessarily comes within the scope of the invention covered by that patent, but is not otherwise indicated in individualized form as a specific embodiment of the method of that patent, provided that it is specifically identifiable, in the light of all the information disclosed by that patent, by a person skilled in the art, based on that person’s general knowledge in the relevant field at the filing date or priority date of the basic patent and on the prior art at that date.

2. Article 3(a) of Regulation No. 469/2009 must be interpreted as meaning that a product is not protected by a basic patent in force, within the meaning of that provision, if, although it is covered by the functional definition given in the claims of that patent, it was developed after the filing date of the application for the basic patent, following an independent inventive step. (emphasis added by the Cour d’appel).

Regarding the first part of the Royalty Pharma test the Cour d’appel considered that:

To demonstrate that the person skilled in the art could specifically identify osimertinib as an irreversible inhibitor of the EGF receptor, the appellants only put forward allegations, arguing that the skilled person needed only perform standard enzymatic inhibition assays distinguishing EGFR irreversible inhibition from the reversible inhibition of EGFR, said assays being comprised in the basic knowledge of a biochemist […], without submitting any evidence, such as scientific publications or declarations from persons skilled in the art in support of their thesis.

Besides, the court observes that several years of research were necessary to precisely and specifically identify osimertinib as an active product, since osimertinib was only claimed in a patent on July 25, 2012 by Astrazeneca, which confirms that upon reading all the information contained in the [basic] patent in the light of its knowledge, this product was unknown to the person skilled in the art at the filing date in 2006. The skilled person could not directly and unequivocally infer [osimertinib] from said patent, its discovery being the result of several years of complex research.

Regarding the second part of the Royalty Pharma test the Cour d’appel considered that:

The appellants however argue, in the light of the Royalty Pharma judgement, that while osimertinib was developed after the filing date of the basic patent application, the inventive activity which led to the authorized product was not ‘independent’ since the inventors of the Astrazeneca patent relating to osimertinib based their work on the EP’414 basic patent and on scientific publications, in particular a KWAK publication of 2005 (Mr. Eunice KWAK being one of the inventors of the EP’414 basic patent), since an AVIZIENYTE publication of 2008, of which Mr. Richard WARD was a co-author (and also a co-inventor of Astrazeneca’s EP’895 patent in which osimertinib is identified) referred to the KWAK publication of 2005 […].

While these elements demonstrate that the EP’414 basic patent has undoubtedly enriched the state of the art and contributed to research relating to EGFR inhibitors, they do not establish that the active product osimertinib, which has led to the Tagrisso medicinal product, would not be the result of an independent inventive activity.

In this regard, the Cour finds that while Astrazeneca also filed two US patents US 8946235 and US 9732058 on July 25, 2012 and on December 19, 2014, relating to this active product, which mention the basic patent as prior art, fifteen other patents are also cited as prior art, which counterbalances the appellants’ allegations.

Similarly, it should be noted that if the AVIZIENYTE publication of 2008 mentioned the KWAK study of 2005, it also mentions thirty-one other bibliographic references.

Accordingly, the refusal of the SPC application was upheld by the Cour d’appel.

We must say that we are not entirely convinced by the simple quantitative approach adopted by the Cour d’appel for determining if the work underlying Astazeneca’s EP’895 patent is independent from the work which yielded the basic patent EP’414. Indeed, simply counting the total number of references cited by a patent or a scientific publication does not take into account the fact that not all cited references relate to the subject of interest, e.g. some of the cited references may only relate to minor experimental procedures, nor that not all cited references have the same scientific weight. In our opinion, it could be more relevant to establish the influence exerted by a publication/patent on following publications/patents, which can be estimated by counting the number of times the publication/patent has been cited by others, that is to say its impact factor. In this regard, it should be noted that the KWAK 2005 publication was cited more than 1000 times (Google Scholar count) which is a huge number. By comparison the AVIZIENYTE publication of 2008 was cited 93 times (Google Scholar count). We are not sure if this establishes whether the inventive activity leading to osimertinib depends from the work forming the subject-matter of the landmark KWAK 2005 publication and of the EP’414 patent, as the CJEU is rather elusive as to what constitutes an independent inventive activity, but in our opinion it is likely that this seminal work gave birth to a new field of research, i.e. searching for irreversible EGFR inhibitors useful to circumvent the T790M mutation, which eventually led to osimertinib.

With this decision we end our series of three recent decisions of the Paris Cour d’appel rendered on SPC refusals by the INPI. The final score is a spectacular hat trick (3 – 0) in favor of the INPI against SPC applicants.

Strikingly, if we perform a rapid statistical analysis of the decisions of the Paris Cour d’appel rendered on refusals of SPC applications by the INPI and discussed on this blog since 2016, we find that the Paris Cour d’appel upheld 100% (10/10) of the SPC refusals.

The odds of obtaining a reversal of a refusal decision are therefore clearly not in favor of SPC applicants. As such, if this trend were to continue, the best thing that could be expected from an appeal against a refusal of an SPC application by the INPI would be a reference for preliminary ruling by the CJEU, as e.g. in the Santen case (C-673/18). And indeed, all three decisions we discussed attempted to obtain a reference for a preliminary ruling, which the Cour d’appel however refused to pursue.

Thanks again Lionel for making my life easier reporting on this recent SPC case law – and for incidentally teaching me a sports-related idiom (definitely not my forte).

Is it fair to generally consider that, if a second patent filed after the publication of the basic patent gets granted and if it specifically claims an active ingredient which is generally covered by the basic patent, then there is almost no way the basic patent can be validly relied upon for an SPC application on that active ingredient?

Anyway, we will make sure to do something special on this blog next time an SPC refusal is overturned on appeal.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, February 9, 2021, Wyeth LLC & The General Hospital Corporation v. Directeur général de l’INPI, RG No. 19/19410.

Court says no to Ono

Owing to my colleague and excellent friend Lionel Vial, it is SPC month on Patent my French!

After tackling the recent Halozyme judgment a couple of weeks ago, Lionel now goes one-on-one with Ono.

As promised last week, we are back to discuss the second of the third recent supplementary protection certificate (SPC) appeal decisions rendered on refusals of the French patent office (INPI).

This week’s decision, which was rendered by the Paris Cour d’appel on January 19, 2021, discusses not one but two articles (aren’t we lucky) of Regulation (EC) No 469/2009 (the “SPC regulation”): 3(a) and 3(c).

SPC application FR15C0088 was filed on December 15, 2015 by Ono Pharmaceutical Co. Ltd and Professor H., whom we are told in the decision is a Nobel prize winner, on the basis of (i) marketing authorization EU/1/15/1014 in the name of Bristol-Myers Squibb Pharma EEIG and of (ii) European patent EP 1537878 (which will give you the full name of Professor H. if you are curious or if you don’t know the names of all Nobel prize winners by heart). EP 1537878 was filed on July 2, 2003 and granted on September 22, 2010. The product forming the subject-matter of the SPC is nivolumab (Opdivo®), a human monoclonal antibody which blocks the PD-1 receptor and is indicated in the treatment of certain cancers.

Since the decision begins with article 3(c) of the SPC regulation, let’s do the same.

The SPC application was rejected on March 2, 2018 pursuant to article 3(c) of the SPC regulation because a SPC had already been granted to Ono Pharmaceutical Co. Ltd for nivolumab.

The SPC in question is FR15C0087, also filed on December 15, 2015, granted on January 6, 2017, and held by Ono Pharmaceutical Co. Ltd and E. R. SQUIBB & SONS, L.L.C on the basis of European patent EP 2161336.

The INPI based its decision in particular on the judgment of the CJEU of September 3, 2009 in case C‑482/07 (AHP Manufacturing), which notably provides that “it should be pointed out that the first sentence of Article 3(2) [of Regulation (EC) No 1610/96, i.e. the phytosanitary SPC regulation] precludes the grant, to the holder of more than one patent for the same product, of more than one SPC for that product. However, the second sentence of Article 3(2) allows such a grant to two or more holders of different patents for the same product. It is thus apparent that the special condition for the grant of two or more SPCs for the same product is that the relevant applications emanate from different holders of basic patents” (see paragraph 25 of the judgement).

Faithful readers will immediately be reminded of a previous decision discussed here on this blog, in which the Cour d’appel sustained the decision of the INPI to reject a SPC applied by Medivir AB for simeprevir pursuant to article 3(c) in view of a previous SPC for the same product held by Medivir AB and Janssen Sciences Ireland UC.

The INPI therefore appears to be consistent in considering that the different holders of a same SPC or SPC application should not be considered as a single entity but individually.

Is it also the case of the Cour d’appel?

In the appeal proceedings, Ono and Professor H. notably argued that the case law of the General Court of the European Union (EU) allows the EU judge who cannot find elements in the EU law which would allow her/him to specify the content and scope of an EU provision by an autonomous interpretation to rely on national law. In the present case, pursuant to French civil law ruling co-ownership, the “holder” within the meaning of the SPC and phytosanitary SPC regulations would thus refer to all the persons holding property rights on a patent, so that the two basic patents (and the corresponding SPCs) would be held by different holders.

The Cour d’appel ruled as follows:

In this regard, the reference made by the appellants to the rules of civil law relating to co-ownership to argue that the holders of the EP 336 and EP 878 patents are not the same – the co-ownership consisting of the ONO and SQUIBB & SONS companies, holders of the EP 336 patent, being in this regard different from the co-ownership consisting of the ONO company and Pr. H., holders of the EP 878 patent – so that the conditions of Article 3(2) (second sentence) of regulation (EC) 1610/96 are fulfilled, is inoperative. The rules governing patent co-ownership are specifically defined by articles L. 613-29 to L. 613-32 of the Code de la propriété intellectuelle. Article L. 613-30 expressly provides that the ordinary law governing co-ownership resulting from the civil code does not apply to co-ownership of a patent application or a patent. Article L. 613-29 provides that “Each of the co-owners may use the invention for its own benefit, provided the other co-owners are indemnified (…)”. It follows therefrom that ONO, which is a co-owner of both the EP 336 and EP 878 patents and which may use them alone under the conditions set forth in article L. 613-29 of the Code de la propriété intellectuelle, is a “holder” of these patents within the meaning of article 3(2) of previously cited regulation No. 1610/96.

The decision of the INPI was therefore sustained.

Here, we are of the opinion that the reasoning of the Cour d’appel might miss a point. Indeed, article L. 613-32 of the Code de la propriété intellectuelle provides that articles L. 613-29 to L. 613-31 apply in the absence of contractual provisions stating otherwise and that co-owners may decide otherwise at any time through a co-ownership agreement.

As such, before reaching its conclusion, the Cour d’appel should have checked whether co-ownership agreements had been set up between Ono & Squibb on the one hand, and between Ono & Professor H. on the other hand, and if both these agreements allowed Ono to use the patents for its own benefit, without requiring any authorization from the other parties.

Perhaps this missing piece in the reasoning of the Cour d’appel will be addressed by the Cour de cassation (the French Supreme court) in the future.

An Easter egg was supposed to be hidden in this post, but it went missing.

Notwithstanding, this may be irrelevant for the outcome of this case, as the rejection was also based on article 3(a) of the SPC regulation.

Claim 3 of the basic patent was relied on for the purpose of the SPC application:

Anti-PD-1 antibody which inhibits the immunosuppressive signal of PD-1 for the use in cancer treatment.

The INPI considered that while claim 3 did “implicitly” cover nivolumab, it could not be interpreted in the light of the description of the basic patent as relating “necessarily” and “specifically” to this active ingredient within the meaning of the judgement of the CJEU in case C‑493/12 (Eli Lilly), as the description of the patent did not contain any indication, such as a concrete embodiment or any other teaching allowing to specifically individualise nivolumab.

The appellants argued that nivolumab necessarily relates to the invention covered by the patent, because it implements the technical contribution brought by the basic patent. The appellants further argued that nivoluab was specifically identifiable by the person skilled in the art because patent EP 878 teaches all the necessary elements to identify the antibodies forming the subject-matter of claim 1, and describes in detail the steps for producing an anti-PD-1 antibody and how to screen these antibodies to identify those which inhibit the immunosuppressive signal of PD-1; as such, the person skilled in the art could obtain, at the filing date of the EP 878 patent, through routine operations, all the antibodies fulfilling the function recited by the EP 878 patent, including nivolumab.

The Cour d’appel essentially relied on the judgement handed by the CJEU on April 30, 2020 in case C‑650/17 (Royalty Pharma) to reach its decision.

The Royalty Pharma judgement provides:

1. Article 3(a) of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products must be interpreted as meaning that a product is protected by a basic patent in force, within the meaning of that provision, if it corresponds to a general functional definition used by one of the claims of the basic patent and necessarily comes within the scope of the invention covered by that patent, but is not otherwise indicated in individualised form as a specific embodiment of the method of that patent, provided that it is specifically identifiable, in the light of all the information disclosed by that patent, by a person skilled in the art, based on that person’s general knowledge in the relevant field at the filing date or priority date of the basic patent and on the prior art at that date.

2. Article 3(a) of Regulation No 469/2009 must be interpreted as meaning that a product is not protected by a basic patent in force, within the meaning of that provision, if, although it is covered by the functional definition given in the claims of that patent, it was developed after the filing date of the application for the basic patent, following an independent inventive step (emphasis added by the Cour d’appel).

The Cour d’appel agreed with the appellants that nivolumab is implicitly and necessarily within the scope of the invention covered by the basic patent. However, it came to a different conclusion as to whether nivolumab is specifically identifiable.

The Cour d’appel considered that the preparation of monoclonal antibodies requires more than routine operations. The fact that 3 years were necessary for Ono to file the EP 336 patent which specifically relates to nivolumab was a sound indication that an independent inventive step was needed from the EP 878 patent to arrive at nivolumab.

The decision of the INPI based on article 3(a) of the SPC regulation was therefore also sustained.

For our part, we are not certain that the article 3(a)-test should be applied in the same manner to functionally-defined antibodies on the one hand and small molecules on the other hand.

Indeed, given a protein target, it is generally considered that the level of difficulty for identifying small molecule inhibitors is higher than for antibody inhibitors. As such, this difference should also be reflected in the standard to apply for determining if a product is specifically identifiable from a patent specification. In this regard, it should be noted that the Royalty Pharma judgement arose from a small molecule case (sitagliptin). In contrast, the Eli Lilly judgement arose from a monoclonal antibody case (tabalumab). Accordingly, perhaps monoclonal antibody SPCs should be assessed on the basis of the Eli Lilly judgement, without applying the “independent inventive step” test added by the Royalty Pharma judgment, which should be reserved to small molecules, at least until the CJEU clearly states that this latter test is of universal application for functionally-defined products. In this regard, it should be noted that the UK intellectual property office did grant a SPC for nivolumab based on the EP 878 patent on June 25, 2018 (before the Royalty Pharma judgement was handed).

We will be back soon with the last of the three SPC appeal decisions rendered on refusals of the INPI, with yet another article 3(a)/Royalty Pharma case.

Thank you Lionel. Any decent SPC post is supposed to end with the expression of a wish for – or fear of – a future CJEU referral, and I am quite happy that this one is no exception.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, January 19, 2021, Ono Pharmaceutical Co. Ltd. et al. v. Directeur général de l’Institut national de la propriété industrielle, RG No. 18/10522.

Easy as ACD

Even for those who know the ABCs of patent law, mastering the ACDs of SPC law may seem a daunting task. I am talking about article 3(a), 3(c) and 3(d) of the SPC regulation of course, a never-ending source of legal headaches. 

I am happy to once again host a contribution from SPC enthusiast Lionel Vial, reporting on the first of a series of three recent judgments. With his explanations, I am sure everything will look as easy as ACD.

Today we discuss the first of three recent decisions of the Cour d’appel (appeal court) of Paris rendered on appeal against decisions of the French patent office (INPI) to reject three SPC applications in view of Articles 3(a), 3(c) and 3(d) of the SPC Regulation (Regulation (EC) No 469/2009):

Date of the decision Parties SPC Product Article of the SPC regulation applied Main CJEU decisions applied Outcome
15/12/2020 Halozyme Inc. 15C0053 Trastuzumab and recombinant human hyaluronidase 3(d) C-631/13 (Arne Forgsen) SPC rejection sustained
19/01/2021 Ono Pharmaceutical Co. Ltd & Prof. H 15C0088 Nivolumab 3(a) & 3(c) C-482/07 (AHP Manufacturing) & C-650/17 (Royalty Pharma) SPC rejection sustained
09/02/2021 Wyeth LLC & the General Hospital Corporation 16C1004 Osimertinib 3(a) C-650/17 (Royalty Pharma) SPC rejection sustained
The ABC mouse is right: SPC law does feel like the teacher playing a joke on the class.

In the first case, Halozyme Inc. had applied for a SPC (FR15C0053) for a combination product of trastuzumab and recombinant human hyaluronidase on the basis of a marketing authorization (MA) granted on 26 August 2013.

The combination is indicated in the treatment of breast and gastric cancer. Trastuzumab is a monoclonal antibody targeting HER2 thereby inhibiting the proliferation of human tumor cells that overexpress HER2. Recombinant human hyaluronidase increases the dispersion and absorption of co-administered drugs when administered subcutaneously, by catalyzing the hydrolysis of hyaluronan, a constituent of the extracellular matrix.

A previous MA for trastuzumab was granted on 28 August 2000.

Problem: the summary of the product characteristics of the MA of 2013 mentions trastuzumab as the sole active ingredient and hyaluronidase is listed among the excipients.

As a consequence, the INPI rejected the SPC application on 7 March 2018 on the basis of Article 3(d) of the SPC Regulation, considering that recombinant human hyaluronidase was not an active ingredient having a therapeutic action of its own but that it was an excipient, as provided in the summary of the product characteristics of the MA. As such, hyaluronidase did not qualify as a product within the meaning of the SPC regulation, the product being none other than the active ingredient shown in the MA, i.e. trastuzumab, which had already been granted a MA in 2000.

Halozyme appealed the decision of the INPI in particular on the ground that, based on judgement C-631/13 (Arne Forgsen) of the CJEU, it was of no consequence that hyaluronidase was presented as an excipient in the MA, since the SPC regulation does not provide that a SPC should be only granted for active ingredients presented as such in the corresponding MA. Instead, it should be verified, based on all pertinent factual and scientific elements, whether the ingredient at stake could be considered an active ingredient. In this regard, recombinant human hyaluronidase should be considered as an active ingredient, since it has a therapeutic action on the organisms of patients allowing treating breast cancer.

As a reminder, judgement C-631/13 notably provides that:

Article 1(b) of Regulation No 469/2009 must be interpreted as meaning that a carrier protein conjugated with a polysaccharide antigen by means of a covalent binding may be categorized as an “active ingredient” within the meaning of that provision only if it is established that it produces a pharmacological, immunological or metabolic action of its own which is covered by the therapeutic indications of the marketing authorization, a matter which it is for the referring court to determine, in the light of all the facts of the dispute in the main proceedings. (emphasis added).

This is what the Court decided:

It results from the foregoing that it appears from the “summary of the product characteristics” of the MA that the active ingredient of the medicinal product is trastuzumab, that hyaluronidase is an excipient, and that no other element contained in the MA justifies that hyaluronidase alone, or associated to trastuzumab, would produce a pharmacological, immunological or metabolic action of its own which is covered by the therapeutic indications of the MA (emphasis added).

[…]

It follows that, in the combination of trastuzumab and recombinant human hyaluronidase, forming the subject-matter of the SPC at stake, only trastuzumab is the active ingredient, while a MA has already been granted for trastuzumab alone. Therefore the invoked MA is not the first MA for the product pursuant to article 3(d) of the regulation. Accordingly, the director of the INPI rightly decided that the SPC application did not comply with the requirements of the regulation and that it had to be rejected.

Even though the appeal was eventually rejected, it should be noted that the Cour d’appel did consider other parts of the MA than the summary of the product characteristics to assess the action of hyaluronidase and establish whether it could be considered as an active ingredient.

Accordingly, there is still some hope for combination SPCs in France when one of the ingredients of the combination is not mentioned as an active ingredient in the summary of the product characteristics of the MA, provided, of course, that data showing a therapeutic action of its own within the indications of the MA is available.

To be continued with the second of the three decisions!


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, December 15, 2020, Halozyme Inc. v. Directeur Général de l’INPI, RG No. 18/14332.