Royalty Pharma Collection Trust v Deutsches Patent- und Markenamt.
Date: 2020-04-30
26


In this regard, it is a matter of settled case-law that the Court may, of its own motion, on a proposal from the Advocate General, or at the request of the parties, order the reopening of the oral procedure under Article 83 of its Rules of Procedure if it considers that it lacks sufficient information or that the case must be decided on the basis of an argument which has not been debated between the parties or that one of the parties has submitted a new fact which is of such a nature as to be a decisive factor for the decision of the Court. By contrast, neither the Statute of the Court of Justice of the European Union nor the Rules of Procedure make provision for the parties to submit observations in response to the Advocate General’s Opinion (judgment of 21 March 2019, Abraxis Bioscience, C‑443/17, EU:C:2019:238, paragraph 16 and the case-law cited).
31


In this regard, it should be observed that, in its reply to the question raised in the case which gave rise to the judgment of 25 July 2018, Teva UK and Others (C‑121/17, EU:C:2018:585, paragraphs 34 and 35), the Court did not employ the concept of ‘core inventive advance’, even though the referring court called on it to do so in its request for a preliminary ruling. On the contrary, in that judgment, the Court recalled the key role played by the claims, under Article 69 of the EPC and Article 1 of the Protocol on the Interpretation of Article 69, thus confirming that the subject matter of the protection conferred by an SPC must be restricted to the technical specifications of the invention covered by the basic patent, such as claimed in that patent (judgment of 25 July 2018, Teva UK and Others, C‑121/17, EU:C:2018:585, paragraph 46), and not extend to the ‘core inventive advance’.
34


In that regard, it should be borne in mind that the Court has consistently emphasised the key role played by the claims for the purposes of determining whether a product is protected by a basic patent within the meaning of that provision (judgment of 25 July 2018, Teva UK and Others, C‑121/17, EU:C:2018:585, paragraph 34 and the case-law cited).
35


So far as the European patent, in particular, is concerned, it should be noted that, pursuant to Article 69 of the EPC, the extent of the protection conferred is determined by the claims conferred by such a patent. The information in Article 1 of the Protocol on the Interpretation of Article 69 of the EPC states that those claims must ensure both a fair protection for the patent proprietor and a reasonable degree of legal certainty for third parties. Thus, they must not serve merely as a guideline, nor can they be interpreted as meaning that the extent of the protection conferred by a patent is that defined by the narrow, literal meaning of the wording used in the claims (judgment of 25 July 2018, Teva UK and Others, C‑121/17, EU:C:2018:585, paragraph 35).
36


In this respect, the Court has held that Article 3(a) of Regulation No 469/2009 does not, in principle, preclude an active ingredient which is given a functional definition in the claims of a basic patent issued by the European Patent Office from being regarded as protected by the patent, on condition, however, that it is possible, on the basis of those claims as interpreted in, inter alia, the light of the description of the invention, as required under Article 69 of the EPC and the Protocol on the Interpretation of that provision, to conclude that the claims relate implicitly but necessarily and specifically to the active ingredient in question (judgment of 25 July 2018, Teva UK and Others, C‑121/17, EU:C:2018:585, paragraph 36 and the case-law cited).
37


The Court inferred from this that, in order to ascertain whether a particular product is protected by a basic patent in force, within the meaning of Article 3(a) of Regulation No 469/2009, it is necessary to ascertain, where that product is not expressly mentioned in the claims of that patent, whether that product is necessarily and specifically covered by one of those claims. To that end, two cumulative conditions must be satisfied. First, the product must, from the point of view of a person skilled in the art and in the light of the description and drawings of the basic patent, necessarily come under the invention covered by that patent. Second, the person skilled in the art must be able to identify that product specifically in the light of all the information disclosed by that patent, on the basis of the prior art at the filing date or priority date of the patent concerned (see, to that effect, judgment of 25 July 2018, Teva UK and Others, C‑121/17, EU:C:2018:585, paragraph 52).
46


The Court has stated that it is not the purpose of the SPC to extend the protection conferred by the basic patent beyond the invention which that patent covers. It would be contrary to the objective of Regulation No 469/2009, according to which the grant of the additional period of exclusivity by the use of SPCs is intended to encourage research and, to that end, to ensure that the investments made in such research are covered, to grant an SPC for a product which is not covered by the invention which is the subject of the basic patent, inasmuch as such an SPC would not relate to the results of the research claimed under that patent (see, to that effect, judgment of 25 July 2018, Teva UK and Others, C‑121/17, EU:C:2018:585, paragraphs 39 and 40).