There are important assessments to make prior to filing for SPCs, as certain choices will be very difficult to correct later on. Under Article 3(c), the rule is ‘one SPC per product, per holder.

In scenarios where you have different options (patents) to choose from, you cannot have a change of heart, once a first SPC is granted. Even the withdrawal of the first SPC cannot resolve that. So, you have to decide beforehand which patent is the strongest, provides the best basis for an SPC, and results in meaningful SPC duration. For example, an SPC that outlasts the regulatory exclusivity periods could be considered high value. There are certain loopholes to circumvent the Article 3(c) issue, such as using different entities within one corporation for obtaining more than one SPC.

Some patent offices may help by respecting an Applicant’s indication of the order in which SPCs should be examined, and also, for example, allow suspension of proceedings while opposition is ongoing.

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