News

December 2011

UK SPC Renewal fees – no remedies for a missed payment!

Supplementary Protection Certificates (SPCs) compensate patentees in Europe for the long time it can take to get pharmaceutical products to market. SPCs are available for pharmaceutical products and take effect at the end of the 20-year term of the relevant patent.

In the UK, the patentee must pay SPC annual renewal fees. In contrast to UK patent renewal fees, which are paid annually, SPC annual renewal fees are due as a single cumulative amount, before the SPC can take effect.

In a recent case, the applicant missed paying the accumulated renewal fees in time. The applicant tried a number of ways to correct the error, but all were unsuccessful, and the SPC lapsed.

Background

This case relates to a UK SPC which had been granted, but had not come into effect.

The applicant used the UK-IPO automated system to pay patent renewal fees. This system is not to be used for SPC renewal fees.

The applicant tried to use the system to pay the SPC renewal fees. The system incorrectly read the SPC application as a patent number and sent an automated payment rejection notice to the applicant. The applicant did not realise the notice related to the SPC payment.

Although the UK-IPO sent the applicant standard reminders to pay the SPC fees, the applicant did not realise that the fees had been rejected until after expiry of the payment deadline and subsequent 6 month grace period.

Once the applicant realised the error, it argued that the error should be remedied by one of a number of ways:

• Reinstatement of the SPC using the same procedure as for a UK patent application that has lapsed by unintentional failure to carry out an act in time.
• Restoration of the SPC using the same procedure as for a UK patent that has lapsed by unintentional failure to pay a renewal fee in time.
• Correction of an irregularity because the UK-IPO wrongly identified the SPC as a patent, when rejecting the fee payment.

Decision

The UK-IPO looked at each of the remedies but rejected them all:

• Reinstatement applies only to applications, so does not apply to a granted SPC.
• Restoration applies only to a UK patent that has ceased to have effect. It cannot apply to a SPC that had never been brought into effect at the time of lapse. Further UK patent law contains special SPC provisions, which do not refer to restoration.
• The UK-IPO has cannot accept the late payment as a correction of a UK-IPO irregularity, because the UK-IPO had followed its usual procedures for’s and issued reminders for payment of the SPC renewal fees. The automated payment system operated as intended. The UK-IPO noted that the applicant did not act when it received the fee payment rejection notice.

The UK-IPO held that the applicant could not validly pay the fee. The SPC did not come into effect in the UK.

Conclusions

The UK-IPO was satisfied that the failure to pay the accumulated renewal fees was unintentional, and said that, if restoration could apply to SPCs, it would have allowed the request for restoration. For the moment UK patent law does not contain a provision to restore an SPC, for failure to pay renewal fees in time, similar to the provision to restore a UK patent.

Therefore, at present, if the accumulated SPC renewal fees are not paid by the end of the 6 month grace period, the UK SPC will lapse. There is no way of rescuing this situation.

It is essential to use the correct system to make SPC renewal fee payments.

This case is likely to be appealed. If so, it will be interesting to see whether the Court finds a way to allow the failure to be remedied.