IP Bulletin - February 2014

PATENTS

CJEU considers the circumstances in which a Supplementary Protection Certificate may be granted for a plant protection product

The Court of Justice of the European Union ("CJEU") recently ruled that a SPC could not be granted for a plant protection product which was the subject of an emergency marketing authorisation authorised under Article 8(4) of the Plant Protection Product Directive.

Sumitomo Chemical Co Ltd v Deutsches Patent und Markenamt Case C-210/12, 17 October 2013

Comment

Whilst an Article 8(4) emergency marketing authorisation is not considered functionally equivalent to a full marketing authorisation, the CJEU did say that an emergency authorisation granted under Article 8(1) of the PPP Directive is considered to be the functional equivalent of a full marketing authorisation and, as such, a SPC could be granted for a patent which is the subject of this type of emergency marketing authorisation.

The case further illustrates the need for due diligence when contemplating taking an assignment of a patent. Note that each condition necessary for grant of a SPC, as set out in Article 3(1) of the Regulation, has to be met on the date of the application for the SPC. Careful regard to these conditions, existing marketing authorisations, and the impact of both on grant of SPCs, is therefore an essential part of the due diligence process when considering the acquisition (or licensing) of patents.

Background

Marketing of plant protection products is governed by the Plant Protection Product Directive 91/414 (the "PPP Directive"). Under the PPP Directive, plant protection products may not usually be placed on the market without a marketing authorisation for the product. An exception exists under Article 8(4) whereby a product may be authorised (by way of an emergency marketing authorisation) to be placed on the market for limited and controlled use where necessary "because of an unforeseeable danger which cannot be contained by other means". (A further exception exists under Article 8(1), although the product in this case was not the subject of this type of emergency marketing authorisation.)

Article 3(1) of Regulation No. 1610/96, the Regulation concerning Supplementary Protection Certificates ("SPCs") for plant protection products (the "Regulation"), provides that a SPC may only be granted if (i) the product is protected by a basic patent in force (ii) if a valid marketing authorisation is in place; (iii) if the product has not already been the subject of a SPC; and (iv) if the marketing authorisation is the first authorisation to place the product on the market as a plant protection product. A SPC, if granted, extends the period of protection of a patent by five years and confers considerable benefits on the patent holder.

Following an application to the German patent office for a SPC by Sumitomo Chemical Co Ltd, and a subsequent referral by the German Federal Patent Court, the CJEU was asked whether a SPC for a patent covering a plant protection product could be granted on the basis of an emergency marketing authorisation granted under Article 8(4) of the PPP Directive.

Decision

The CJEU ruled that the emergency authorisation (granted under Article 8(4) of the PPP Directive) was not the functional equivalent of a full marketing authorisation granted under Article 4 of the PPP Directive. An application for a SPC could not therefore be filed because there was no relevant marketing authorisation in place.

High Court rules that a contract may be made in two jurisdictions

The High Court found, in this recent case, that a contract can be made in two different jurisdictions. The parties had omitted a choice of law and jurisdiction clause when the agreement between them was signed because they were unable to agree on both. The court was able to establish jurisdiction and, as a result, ruled that the previous permission which granted leave to serve proceedings out of the jurisdiction should not be set aside.

Conductive Inkjet Technology Ltd v Uni-Pixel Displays Inc [2013] EWHC 2968 (Ch), 7 October 2013

Comment

As well as providing a useful reminder of the test to be applied when seeking leave to serve out of the jurisdiction, the case also illustrates the risks of parties failing to agree expressly a governing law and jurisdiction clause (a not uncommon occurrence in this digital age where contracts may be agreed by email or telephone). Whilst not doing so may give rise to costly and unwelcome legal proceedings, some may consider, following this decision, that there are advantages to be had in following such a course of action.

Background

The parties signed a non-disclosure agreement relating to the exchange of confidential information concerning specified technological processes. The exchange of information took place for a limited purpose, to enable the parties to progress a potential business relationship. The agreement did not contain a choice of law or jurisdiction clause. A further contract was entered into concerning the business cooperation, and again this did not contain a choice of law or jurisdiction clause. (A later third agreement between the parties contained a jurisdiction and governing law clause for the state of Texas, USA.) The defendant, UPD, subsequently made two patent applications concerning certain inventions. The claimant, CIT, alleged that the inventive concepts and subject matter of the applications were disclosed to UPD in the course of the earlier communications and business cooperation and that the defendant used the claimant's proprietary information in breach of its obligation of confidence. CIT brought legal proceedings in the UK by way of two claims (the EPA claim and the Breach claim), seeking declarations, damages and a range of injunctive reliefs against UPD. In addition, CIT sought leave from the court to serve the proceedings out of the jurisdiction on UPD. Permission to serve out of the jurisdiction was granted.

UPD then brought legal proceedings in Texas in the USA seeking a declaration that it had not breached any...