Advocate-General Yves Bot has invited the Court of Justice of the European Union (CJEU) to dismiss Spain’s second challenge to Europe’s Unitary Patent System.  In cases C-146/13 and C-147/13, the A-G opined that the unitary patent and associated litigation system will confer ‘a genuine benefit’ of ‘uniformity and integration’ when compared to conventional European patents (EPs). Although granted centrally by the European Patent Office (EPO), conventional EPs take effect, and may only be enforced, separately, in each country in which the patent is validated. Unitary patents will take effect across most of Europe as a single territory.

The A-G also observed that the official languages in which unitary patents will be administered – French, German and English – should reduce translation costs. There is no principle of equality of languages in EU law and making the unitary patent system available in all EU languages would only raise the (already high) costs of European patent protection. The choice of language also reflects the realities of the patent world.  Those are the languages spoken in Member States from which most EU patent applications originate and in which most scientific papers are published.

Ironically, the A-G’s Opinion is yet to be published in English but is available in 18 other European languages!  This Alert is based on the CJEU’s related press release No 152/14 which is available here.

Background

In April 2013, the CJEU rejected claims brought by Spain and Italy against the Council of the EU challenging the use of the enhanced co-operation procedure to create Europe’s unitary patent system.  Spain is not participating in either the unitary patent or the Unified Patent Court (UPC).

In March 2013, Spain launched further legal challenges to the two EU Regulations on which the unitary patent package is based (1257/2012/EUand 1260/2012/EU) (the “Regulations”).  It again challenged the use of the enhanced cooperation procedure and the language regime for the unitary patent saying that it would operate “to the detriment of persons whose mother tongue is not English, French or German”.

Spain also raised new arguments, attacking amongst other things the use of the EPO to carry out key administrative tasks relating to unitary patents (eg. examination, grant, renewal and opposition).  In particular, it appears to be arguing that, if the unitary patent was consistent with Article 118 of the Treaty on the Functioning of the European Union (TFEU), it would rightly be administered by the European Commission. The Commission (like other European institutions) is constrained in its ability to delegate power to agencies by the Meroni case law (C9/56 &10/56Meroni v High Authority [1957/1958] ECR 133) which provides for the availability of judicial review of the exercise of delegated powers. Since the EPO’s procedures and decisions are not subject to judicial review, Spain argued that its proposed role in the unitary patent system contravenes EU law.

Underlying this challenge is the fact that the unitary patent, the UPC and the EPO descend from different legal ancestors. The unitary patent, created by the Regulations, is part of the legal system of the European Union (EU) whereas the EPO and the UPC were born of separate international treaties (which are not EU instruments).  The EPO was established under the European Patent Convention (EPC). Part IX of the EPC has always made provision for the EPO to be entrusted with additional tasks relating to unitary patents and the new unitary system is now being built on this foundation, laid in the 1973 Convention.  The UPC will arise out of the Agreement to establish the Unified Patent Court (once it has been ratified by the required number of participating Member States). Significantly, A-G Bot has taken the view that the CJEU does not have jurisdiction to review the content of the UPC Agreement (at least in the context of Spain’s action).

What happens next?

The CJEU is unlikely to give its decision on Spain’s second challenge until 2015. It is to be hoped that the CJEU will make way for the unitary patent system by following the Opinion of A-G Bot, although it is not bound to do so.

Europe’s new unitary patent system should streamline patent protection in Europe enabling inventors to apply for EU-wide patent protection, rather than having to validate granted European patents in each Member State in which protection is sought. The legislation also establishes the UPC as a single patent court with jurisdiction across most of the EU for disputes concerning unitary patents and (subject to an opt-out) conventional EPs.