Master Data Center, Inc v The Comptroller General Of Patents

Under the SPC Regulation, the duration of a supplementary protection certificate is calculated under Article 13, but its expiry may occur earlier under Article 14, including for non-payment of the prescribed fee. National rules may therefore permit an applicant to pay for a shorter effective period.

Where a paediatric extension is sought, Patents Rules 2007 rule 116(5) permits payment for the paediatric extension, but not later payment of unpaid annual fees for an originally unselected period. The general correction power in section 117 of the Patents Act 1977 cannot circumvent a specific mandatory procedural rule. Discretion to correct an agent’s repeated payment error may properly be refused.

These were conjoined appeals by Master Data Center, Inc and Genentech Inc against the Comptroller’s decision that Genentech’s SPC for ranibizumab would lapse after payment had been made for a two-year effective period rather than the maximum period.

Master Data argued that the UK scheme could not permit an applicant to select a shorter period and relied on rule 107 of the Patents Rules 2007. Genentech argued that further fees could be paid following a paediatric extension, that the payment form could be corrected under section 117 of the Patents Act 1977, and that the paediatric extension could extend the reduced period actually paid for. The central questions concerned the interaction between Articles 13 and 14 of the SPC Regulation, the national fee provisions, and the paediatric extension regime.

1. Master Data’s appeal dismissed. Article 13 of the SPC Regulation fixes the certificate’s calculated duration. Article 14 separately provides for earlier lapse, including where the prescribed annual fee is not paid in time. The two provisions therefore permit a certificate to take effect for its Article 13 duration but to lapse earlier under Article 14(c).

2. The Court of Appeal’s decision in Tulane Education Fund v Comptroller [2013] EWCA Civ 890 held, as part of its ratio, that the UK fees are annual fees payable upfront and that an applicant may elect to take the certificate for a shorter period. That reasoning was binding and was applied to reject Master Data’s principal argument. No irregularity attributable to the UKIPO was established for rule 107.

3. Genentech’s first ground dismissed. Rule 116(5) permits payment for the paediatric extension when the application is made. It does not permit later payment of additional annual fees unrelated to the extension. The reward under Article 36 of the Paediatric Regulation extends the maximum Article 13 period, not a period which was not originally paid for.

4. Genentech’s second ground dismissed. Section 117 is a general correction power and cannot be used to circumvent a specific mandatory provision. The principles in Antiphon AB.’s Application [1984] RPC 1, Payne’s Application [1985] RPC 193 and E’s Applications [1983] RPC 231 were correctly applied. Money held in Master Data’s account was not a fee paid to the UKIPO until allocated to a fee-bearing action.

5. Even if correction were available, the discretion would have been refused. The decisive consideration was that Master Data had repeated the same mistake despite earlier UKIPO notifications. Possible prejudice to Genentech did not outweigh that factor, while advertising the correction would have adequately protected third parties.

6. Genentech’s third ground dismissed. Article 13(3) permits only an extension of the period laid down in Articles 13(1) and 13(2). It cannot extend the shorter period for which fees were actually paid.

7. Both appeals were dismissed.

1. High Court (Patents Court): The appeals from the Comptroller’s decision dated 21 February 2020 were dismissed.