Tulane Education Fund

An annual-fee regime for supplementary protection certificates may require payment in advance and in a single sum. A fee remains an annual fee where its amount is calculated by reference to the number of years for which the certificate is elected to have effect. Such a regime is not inconsistent with the certificate taking effect automatically upon expiry of the basic patent if the fee is paid in time.

A certificate granted under a repealed EU regulation remains a certificate granted under that regulation. The repeal does not alter the continuing application of domestic provisions which define certificates by reference to that regulation. The exclusive domestic scheme in Patents Act 1977 Schedule 4A therefore applied, and the statutory restoration provision did not.

Tulane appealed from the dismissal of its appeal against the Comptroller’s refusal to bring a granted supplementary protection certificate into effect. The certificate was due to start when the basic patent expired, but Tulane did not pay the prescribed fee, or the additional late fee, within the statutory periods.

Tulane contended that the fee regime was outside the power conferred by the EU supplementary-protection regime. It also contended that the repeal of the 1992 Regulation meant that section 128B and Schedule 4A no longer governed its certificate, with the result that restoration under section 28 of the Patents Act 1977 was available. The deputy judge rejected both arguments in [2012] EWHC 932 (Pat).

1. Appeal dismissed unanimously. Lord Justice Kitchin gave the judgment, with which Underhill LJ and the Chancellor agreed. The prescribed fee regime was within the power conferred by Article 12 of the 1992 and 2009 Regulations.

2. Article 12 was permissive. Apart from requiring fees to be annual, it imposed no restriction on their amount, timing or method of payment. The domestic provisions validly made the fee depend on the number of years for which the certificate was to have effect. A proprietor could elect a shorter period and pay only for those years. The fee was therefore an annual fee.

3. The obligation to pay before the certificate took effect did not change the character of the fee. Nor did payment in advance and in one sum. Provided payment was made within the prescribed period, the certificate would automatically take effect when the basic patent expired. The domestic regime was consequently not inconsistent with Article 13.

4. The deputy judge reached the correct result on section 128B, although not for the reasons given. It was unnecessary to seek a conforming interpretation: the 2009 Regulation had direct effect and Article 19 independently ensured compliance. Further, Article 22’s repealing formula affected references in EU measures, not provisions of national law implementing the former Regulation.

5. The decisive domestic point was that the certificate had been granted under the 1992 Regulation. Repeal of that Regulation did not change that historical fact, and section 128B had neither been repealed nor amended. Schedule 4A therefore continued to govern the certificate and confined the applicable provisions of the Patents Act 1977 to those listed there. Section 28 was not listed and could not be invoked to restore the certificate.

• Court of Appeal (Civil Division): dismissed Tulane’s appeal in [2013] EWCA Civ 890, upholding the result below.
• High Court, Chancery Division (Patents Court): dismissed Tulane’s appeal from the Comptroller in [2012] EWHC 932 (Pat).
• Comptroller-General of Patents: held that the supplementary protection certificate could not be brought into effect because the required fees were not paid in time: BL O/252/11.