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Tuesday, 23 January 2007

Patentophile polyglot wanted

Patentophile polyglot wanted

The Opinion of Advocate-General Ruiz-Jarabo Colomer in the Portuguese patent-term reference for a preliminary ruling in Case C-431/05 Merck Genéricos Produtos Farmacêuticos has now been posted on the Curia website, in seven of the 20-something European Union official languages but ONCE AGAIN NOT IN ENGLISH, rages the IPKat on behalf of all those good people in the world who either speak English as a first language or cope with it as their least inconvenient working language. Sadly the IPKat has no idea what this dispute is about, but he can reliably inform you that the European Court of Justice has been advised that

"L’article 33 de l’accord ADPIC est dépourvu d’effet direct et il ne peut donc pas être invoqué devant les juridictions nationales à l’encontre d’autres particuliers, dans la mesure où il est subordonné à une intervention régulatrice ultérieure du législateur national en vue de fixer la durée exacte de la protection accordée aux brevets".
Or to put it another way, following a Babelfish and a brush-up:
"Article 33 of the TRIPs Agreement is deprived of direct effect and cannot thus be invoked before the national jurisdictions against other private individuals, insofar as it is subordinated to a later regulating intervention of the national legislature with a view to establishing the exact duration of the protection granted to the patents".
If there's anything there that we ought to know about this Opinion, can some patent-loving polyglot come to our rescue?


Anonymous said...

The dispute itself is about the term of a patent, which under the old Portugese patent law used to be 15 years from the date of grant in Portugal. Merck had a patent which expired under this law in the same year (1996) Merck Genericos brought a generic drug on the market but would have been valid for another 3 years (until 1999) if art. 33 TRIPS would have been applicable.

The A-G basically analyses and agrees with the existing case law on 1. the authority of the ECJ to decide on TRIPs and 2. the direct effect of treaties to which both the EU and the EU member states have acceeded.

Since art. 33 does not relate to a field harmonized by the EU, there is no direct effect.

SMP said...

This opinion originated in the following facts: Merck & Co. Inc. (“Merck”) owned the patent (granted on April 8, 1981, with priority date of December 11 1978) for a given chemical compound which was being commercialized since January 1985 under the trade mark Renitec.
Merck Sharp & Dohme («MSD») has obtained an exploitation license to use, sell or in any other way dispose of the Renitec products in Portugal, being also granted the corresponding plegal powers to defend the patent.
In 1996 Merck Genéricos – produtos Farmacêuticos Lda. («Merck Genéricos») has introduced in the market a medicine under the mark “Enalapril Merck” with a lower price than that of Renitec, and promoted as being the same pharmaceutical product.
Merck and MSD seeked an injunction against Merck Genéricos; the defendant contended that the patent had entered public domain under Portuguese law. And, indeed, when the patent was granted, Article 7º of the Industrial Property Code prescribed a duration of 15 years. This rule was kept valid by Article 7º of the IPCode of 1995 for the patents filed before that year.
MSD argued that, in view of Article 33 of the TRIPs Agreement, protection ended only in 1999.
As the IPKat had noted, the referred questions were:

Does the Court of Justice of the European Communities have jurisdiction to interpret Article 33 of the TRIPs Agreement?

In the event of an affirmative answer to the first question, must national courts apply that Article, on their own initiative or at the request of a party, in proceedings pending before them?"

As to the first question, the AG reviewed all the relevant jurisprudence from the ECJ and concluded that, if he was to apply such jurisprudence, he would have to first declare that the ECJ had no jurisdiction – because there are no community rules on this subject – but, immediately after, to declare that Intellectual Property should be regarded as a whole, integrating not only patents but also, for example, trade marks and models which have already been regulated.
Therefore, he proposes an alternative solution, one that, for several reasons which he meticulously details, supports the jurisdiction of the ECJ to interpret the TRIPS Agreement.

As to the second question, that is, the direct effect of the TRIPs Agreement, the AG also reviews the relevant ECJ jurisprudence. However, he makes a critic of the position assumed by the ECJ on this particular, since, on his view, its results are hardly foreseeable by the institucional operators, and disregards the substantial question, turning it into a mere jurisdiction problem.
Therefore, he proposes (again) an alternative solution, one mainly based in the good faith that should rule international law. Nevertheless and however affirming without doubts the possibility of extracting vertical direct effect of Article 33 of the TRIPS, the AG denies that the direct effect would also exist horizontally, that is, between private individuals. He contends that the date of expiration of an IP right does not concern only its owner, but also, and specially, third parties and the public domain, which represents the general interest. Competitors and the national registrars themselves must know exactly when does patent protection end for a particular territory, and that is an answer Article 33 of the TRIPs can not provide – it must be provided by the national legislative power.

Jeremy said...

Thanks so much, SMP - we're all in your debt :-)

Daniel Martins said...

I am natice Portuguese speaker but sincerely I could not follow the text. I had intention to help and reread the whole text following some clues from the final decision the understand the pros ans cons of the issue.

I have to thank SMP for revealing the mistery. I reread the text and then could finally understand it!

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