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|
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.