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French IPO allows extension of the duration of SPCs on the basis of the MA notification date

The French Intellectual Property Office (IPO) recently issued a notice (French language) advising that the expiration date of French supplementary protection certificates (SPC) can be extended upon request of the registered SPC holder.

The notice applies the 2015 Seattle Genetics ruling of the European Court of Justice (ECJ) which held that the relevant date for the calculation of the SPC duration is not the date of the first Community marketing authorisation (MA) but rather the date on which the MA decision has been notified. This led several EU Member States to retroactively apply this new calculation method, thereby extending the duration of granted SPCs. However, the French IPO, which accepted the new calculation method for pending and future SPCs as from 6 October 2015 (the date of the Seattle Genetics ruling), refused to modify the expiration date of SPCs that were granted before that date given that the French regulatory framework did not allow such retroactive modification as this would jeopardise the legal certainty of third parties.

The ECJ provided additional clarifications in its December 2017 Incyte ruling, putting an end to national discrepancies in the implementation of the Seattle Genetics ruling. It held that "the holder of an SPC may, under Article 18 of Regulation No 469/2009, bring an appeal for rectification of the duration stated in the certificate, provided that that certificate has not expired". In light of this, the notice states that registered French SPC holders can have the expiration date of their SPC extended upon request provided they submit a copy of the publication of the notification date of the Community MA in the European Official Journal.

A prior version of this post was originally published by the same authors in Practical Law – Life Sciences, March 2018 issue (Thomson Reuters).

This post was originally co-authored by Asma Bendjaballah