Genentech v Comptroller [2020] EWCA Civ 475
Genentech was the holder of a supplementary protection certificate (SPC) for the drug Lucentis, used in the treatment of age related macular degeneration. It appointed Master Data Center Inc. (MDC) as its agent for paying renewal fees for the SPC. The maximum duration of the SPC calculated under the SPC Regulation was 3 years and 9 months. Under the domestic legislation bringing the scheme into effect in the UK all renewal fees have to be paid before the SPC comes into effect. MDC, contrary to Genentech’s instructions, paid the fee for only two years. When the error came to light after Genentech sought a padiatric extension to the SPC, both Genentech and MDC sought to pay the additional renewal fees required to extend the SPC to its full term. Three grounds were advanced, correction of an irregularity in procedure due wholly or in part to default by the IPO (Patents Rules 107), that the rules permit late payment of renewal fees where a paediatric extension is sought (patents Rules 116(5)) and correction of an error in a document filed with the IPO (Patents Act section 117). The High Court dismissed all grounds and the Court of Appeal upheld that decision on appeal.
Michael Silverleaf QC appeared for the Comptroller General