Medeva BV -v- Comptroller General of Patents, UK Court of Appeal  EWCA Civ 523
In this decision, the Court of Appeal applied the much anticipated ruling of the Court of Justice made on 24 November 2011 to Medeva's applications for supplementary protection certificates relating to combination vaccines. In brief, the Court of Justice had ruled that Article 3(a) of Regulation (EC) No. 469/2009 precluded the patent offices of EU member states from granting an SPC relating to active ingredients "which are not specified in the wording of the claims of the basic patent relied on in support of the application". The relevant patent claim referred to a method of preparing a vaccine which "comprises" the preparation of two specified active ingredients. The claim made no express reference to the other active ingredients of the combination vaccine in respect of which the SPC applications had been made. Medeva sought to argue that because the word "comprises" or "comprising" in patent claims permits the inclusion of additional elements in addition to those elements expressly referred to, it followed that those additional elements were to be taken as being "specified" in the wording of the claim - a more narrow interpretation would mean that the SPC would fail to provide the same rights in relation to infringement as the underlying patent. The Court of Appeal rejected this argument. Medeva's approach would have the effect of apply the "infringement test" to the interpretation of Article 3(a), something which the Advocate General and the Court of Justice had themselves rejected. The test propounded by the Advocate General was "the subject matter of the patent" or "the scope of protection" test. It was for the national court to determine which active ingredients were specified in the wording of the claims. Where the line was to be drawn was something that would require further references to the Court of Justice, depending on the facts of future cases, but in this case it was clear that, wherever the line was drawn, the active ingredients relating to vaccines against diphtheria, tetanus, meningitis and polio were excluded. It followed that the UK Intellectual Property Office hearing officer and the first instance judge (Kitchin J) had correctly applied the provisions of Article 3(a) to the facts of this case and the appeal was dismissed.
Read the judgment in English here.
Head note: Graham Burnett-Hall