Companies cannot cite Trips agreement to protect patents, says Advocate General

A pharmaceutical company cannot take advantage of a provision in the Agreement on Trade-Related Aspects of Intellectual Property Rights (Trips), concerning the duration of patents, before a court of an EU Member State, according to the Advocate General of the Court of Justice of the European Communities (CJEC).

The CJEC is shortly to give a ruling on a patent lawsuit submitted to it by a Portuguese court, involving the Portuguese arm of Merck & Co, MSD Lda, against the generic arm of the German company Merck KGaA, Merck Genericos-Produtos Farmaceuticos.

In his conclusions published on Tuesday, the Advocate General Damaso Ruiz-Jarabo Colomer said that Article 33 of the Trips agreement cannot be cited by a private entity before national courts against other private entities.

The Advocate General's conclusions are very often followed by the Community Judges.

Merck & Co and MSD Lda argued in their appeal that the generic manufacturer had breached the patent on the hypertension treatment enalapril, marketed by MSD since 1985 in Portugal under the name of Renitec.

Merck Genericos, which put a generic of enalapril on the market in 1996, announced in its defence that the patent for this compound had expired in April 1996, i.e. after the period of 15 years provided in the Portuguese law in force at the time. MSD said that its patent was valid up to December 1999. The Portuguese court rejected the case of MSD, who appealed.

Merck Genericos, ordered at appeal to pay damages to MSD, turned towards the Court of Appeal, challenging the direct effect attributed to Article 33 by the appeal ruling.

The Portuguese Court of Appeal considered that Article 33 does indeed have a direct effect, and referred the matter to the Court of Justice of the European Communities (CJEC) to clarify the community law.

In his conclusions, the Advocate General defended the idea that the CJEC has a general competence to interpret the Trips agreement.

The Advocate General then considers that the Trips agreement does not have a direct effect, in the sense that it is subordinated to the power of the national legislator who must set the exact duration of the protection granted to the patents, in accordance with the internal legal order.

Article 33 cannot therefore be cited before national courts against other private entities, concludes the Advocate General.