Genentech and MDC -v- The Comptroller General of Patents [2020] EWCA Civ 475

31 March 2020

Andrew Lykiardopoulos QC appeared for Genentech and Charlotte May QC appeared for Master Data Center (“MDC”) in these two appeals against a decision of Mr Recorder Douglas Campbell QC (sitting as Judge of the Patents Court) refusing to allow the patentee’s supplementary patent certificate (“SPC”) to continue in force beyond the two-year period mistakenly applied for.

The Court of Appeal found that the UK scheme for SPCs required an advance decision as to the duration of the SPC and it was not possible to pay top-up fees later to extend this term. Therefore, by electing to pay a fee for two years, rather than the maximum permitted term, the applicant had committed to the SPC lapsing at the end of the two-year period.

The Court further found that a paediatric extension merely increased the maximum duration of the SPC and could not countermand the effect of the election to pay less than the fee for the maximum duration.

Mr Recorder Douglas Campbell QC’s judgment was therefore upheld, and the appeals were dismissed.

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