Person

Mike Snodin

Partner

Mike joined Potter Clarkson in 1998 after having completed a doctorate (at Oxford University) and post-doctoral studies (at the Max-Planck Institut für Strahlenchemie) in biomimetic coordination chemistry, and having worked as a researcher in the fuel cells group of Johnson Matthey. Mike primarily handles pharmaceutical and chemical inventions for clients ranging from small and medium sized firms to multinational corporations.

His practice in this area encompasses not only the drafting and prosecution of patent applications, but also activities such as advising on IP strategy, handling opposition proceedings before the European patent office, advising on freedom-to-operate, and assisting in due diligence exercises connected with licensing, investment or financing.

Unusually for a patent attorney, Mike advises in relation to "regulatory" forms of intellectual property that are relevant to regulated, bioactive products. In particular, Mike has expertise in the law relating to Supplementary Protection Certificates (SPCs, a form of IP that can provide an additional monopoly period beyond patent expiry for some pharmaceutical, veterinary and plant protection products). Indeed, Mike has lectured widely on SPCs, and has authored a number of influential articles on the topic, including an article that was the first to propose the concept of negative term SPCs, a concept now accepted by the Court of Justice of European Union in case C-125/10.

DateNews Infomation
May
11
2012
Will Supplementary Protection Certificates soon become much more widely available?

On 3 May 2012, Advocate-General Verica Trstenjak delivered her opinion in the Neurim Pharmaceuticals case (C-130/11) that is pending before the Court of Justice of the EU (CJEU).

The opinion delivered by A-G Trstenjak is non-binding but will be taken into consideration by the CJEU when it reaches its final decision later this year. If confirmed by the CJEU, the conclusions would have a profound, liberalising effect on SPC practice in Europe for new medicinal products that contain previously authorised active ingredients.

SPCs

Supplementary Protection Certificates (SPCs) are national rights in Europe that protect authorised uses of a "product" (an active ingredient or a combination of actives) that has been subject to patent protection. The protection provided by SPCs is particularly valuable, as it can provide an effective barrier to generic competition for up to five (or even five and a half) years beyond patent expiry.

Apr
19
2012
Novartis decision completes a new model for SPCs in EU

A new European court decision completes a new model of how both availability and breadth of protection under supplementary protection certificates are to be assessed. Its confirmation of an earlier decision means SPCs will be afforded a broader scope than some had previously appreciated, report Mike Snodin and Michael Pears.

Mar
09
2012
VALUE ADDED SPCs - CJEU CLARIFIES BROAD SCOPE OF PROTECTION

Following hot on the heels of important SPC decisions issued in late 2011, the Court of Justice of the European Union (CJEU) has now issued a reasoned order in the Novartis v Actavis case (C-442/11).

Jan
24
2012
Supplementary Protection Certificates: The CJEU issues it's decision in two seminal cases

On 24 November 2011, the Court of Justice of the European Union issued decisions in two cases that have important and far-reaching consequences for the application of the law relating to the Supplementary Protection Certificates (‘SPCs')

Jan
17
2012
Legal Commentary - Scrip Regulatory Affairs

European court ruling on SPCs brings relief to industry.

Jan
06
2012
SUPPLEMENTARY PROTECTION CERTIFICATES: SOME FURTHER TWISTS

On 25 November 2011, the Court of Justice of the European Union (CJEU) decided three cases relating to Supplementary Protection Certificates (SPCs) by reasoned order (i.e. without a hearing). The orders follow judgements already handed down in the Medeva (C-322/10) and Georgetown University et al (C-422/10) cases that we previously reported in our IP Update No. 165. The following are further points of note.

Dec
09
2011
SUPPLEMENTARY PROTECTION CERTIFICATES: THE COURT OF JUSTICE AGREES WITH POTTER CLARKSON THAT SPCs WITH NEGATIVE TERMS ARE ACCEPTABLE

The Court of Justice of the European Union (CJEU) ruled yesterday in an important case (C-125/10, Merck Sharp & Dohme Corp. v Deutsches Patent- und Markenamt), relating to Supplementary Protection Certificates (SPCs). The decision of the CJEU is binding upon all national patent offices and courts, and dictates how the term of an SPC is calculated, especially in view of a 6-month extension of term that may be available.

In essence, the CJEU has approved "Model A" of an article published on 7 July 2007 by Mike Snodin and John Miles of this firm, which introduced the revolutionary concept of zero and negative term SPCs.

That is, the CJEU has decided that SPCs can be granted even if they initially have a zero or negative term, i.e. if less than 5 years and 1 day has elapsed between patent filing and Marketing Authorisation (MA) issuance. This is because, provided that at least 4 years, 6 months and 1 day has elapsed from between patent filing and MA issuance, a zero or negative term SPC can serve as the basis for an extended SPC with a positive term.

The particular factual background to this case is discussed in our IP Update no. 153 (relating to the opinion of the Advocate-General that has effectively been confirmed by the Court). However, the essential points of the case, as well as possible actions that you may wish to take, are outlined below.

Nov
24
2011
SUPPLEMENTARY PROTECTION CERTIFICATES: THE CJEU ISSUES ITS DECISION IN TWO SEMINAL CASES

On 24 November 2011, the Court of Justice of the European Union (CJEU) delivered its judgement in two seminal cases relating to Supplementary Protection Certificates (SPCs). Potter Clarkson represented Georgetown University, University of Rochester and Loyola University of Chicago in one case and the party in the other case was Medeva. Our IP Update No 155 discusses the corresponding Advocate General's opinion, which opinion is superseded by the present judgement. The ruling provides significant clarity and is binding on all EU national patent offices and courts.

Oct
14
2011
Legal Analysis - Scrip Regulatory Affairs

Everyday counts: why pharmaceutical companies in the EU need to make sure they get the right SPC term

Oct
10
2011
Might you be entitled to a longer SPC term?

Mike Snodin, a member of our SPC & Regulatory group, has published an article in the journal Scrip Regulatory Affairs that challenges the manner in which many patent offices in Europe calculate the terms of Supplementary Protection Certificates (SPCs) that are based upon a centralised (European Commission / European Medicines Agency) marketing authorisation.