Federal Administrative Tribunal decides leading case on entitlement of multiple owners of supplementary protection certificates (SPC)

The Federal Administrative Tribunal in Switzerland has clarified the extent to which multiple owners of patents covering the same product may each apply for a Supplementary Protection Certificate (“SPC”). SPCs can extend the duration of a patent for a period of up to five years in order to compensate for delays in getting pharmaceutical products to market caused by the need to obtain regulatory authorisations. Under Swiss patent law, it is possible for several SPCs to be granted in respect of the same product, but only one SPC may be granted to each patentee. It is now clear that a patentee may apply for an SPC covering a product even where an SPC covering the same product has already been granted to a different patentee. The Swiss Patent Act had been subject to contrary interpretation.

This leading case concerns the product Enbrel, used for the treatment of rheumatoid arthritis and other diseases. A number of companies, including Immunex Corp, Sanofi-Aventis Hoechst AG and Abbott GmbH & Co. KG obtained SPCs relating to the product in 2000 and 2001. Hoffman-La Roche AG obtained a related patent in 2003 and subsequently applied for an SPC (Hoffman-La Roche AG later transferred its rights to the applicant, AHP Manufacturing BV). Its application was rejected by the Swiss Patent Office, which interpreted the Patent Act narrowly: since further, other SPCs covering the product had already been granted at the time of the application, AHP Manufacturing BV’s application was rejected. The Federal Administrative Tribunal rejected the Patent Office's interpretation and made clear that the fact that other SPCs covering the product had already been granted at the time of AHP Manufacturing BV’s application was irrelevant to the determination of whether or not an SPC could be granted.

The judgment is in line with a recent decision of the European Court of Justice (AHP Manufacturing BV v. Dutch Patent and Trade Mark Office (C-482/07, September 3, 2009)) which took the view that different approaches to protection for the same pharmaceutical within the EU would undermine the objectives of the single market.

Thierry Calame of Lenz & Staehelin represented AHP Manufacturing BV (now part of Pfizer) in the appeal proceedings before the Federal Administrative Tribunal. Thierry Calame's team comprised Lara Dorigo and Dany Meier.