According to the Court of Justice of the European Union’s Advocate General Yves Bot, Spain’s actions against the Regulations implementing enhanced cooperation for the creation of unitary patent should be dismissed1.

For more than four decades, attempts to create a unitary patent system for the European Union have failed, but significant developments in recent years have opened the door to a “Unitary Patent Package”. The intention of the European Legislature has been to maintain the current system of the Convention on the Grant of European Patents (EPC) and improve upon it. The “package” includes a unitary protection to European patents and establishes a specific unified Court. However, Spain, the project’s main opponent , has introduced actions seeking the annulment of Regulations No 1257/2012 and 1260/2012 respectively, creating a unitary patent protection conferred by a patent and establishing the translation arrangements. 

On 18 November 2014, Advocate General Yves Bot released his Opinion in which he suggested the Court of Justice dismiss Spain’s claims. The two Regulations are part of the Unitary Patent Package, along with the Agreement on a Unified Patent Court and Statute that was signed by 25 Member States on 19 February 2013.

In response to Spain’s actions, Advocate General Yves Bot argued:

  • On the breach of the values of the rule of law in so far as a regulation has been established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.  

The new regime offers uniform protection with equal effect for all participating Member States. The aforementioned regulations alter neither the application and examination process of the European patent nor its granting formalities. The EPC’s system remains unchanged. Regulation 1257/2012 simply supplements the European patent system by adding the possibility for applicants to elect for a unitary effect.

  • On the lack of legal basis and alternatively breach of Article 118 of the Treaty on the Functioning of the European Union (TFEU).  

Article 118 of the TFEU does not compel the European Parliament and Council to harmonize every aspect of intellectual property law. According to the Advocate General, the EU legislative body elected to refer to national laws, ensuring uniform protection by stating each European patent would be subject to the domestic law of one Member State, and this same national law would apply throughout the territory of the Member States as part of the enhanced cooperation project. 

  • On the misuse of power through the use of enhanced cooperation.  

Spain argues that European Parliament and Council have committed a misuse of powers, since Regulation No 1257/2013 does not respect the objective of enhanced cooperation provided in Article 20 of the Treaty on European Union (TEU). According to Spain, the very fact that the effects of the European patent with unitary effect are addressed in the Agreement on a Unified Patent Court is simply a means to avoid the European Union’s law and control.

As explained in the previous paragraph, Article 118 TFEU establishing enhanced cooperation in the field of intellectual property does not prevent the European Legislature from referring to national laws, as long as a uniform protection is organized on the territory of the signatory states.

  • On the violation of Article 291(2) TFEU and misapplication of the Meroni case law on the delegation of power.

In the Advocate General’s view, Regulation No 1257/2012 confers the power to establish renewal fees of the European unitary patent to the Member States and to determine how to distribute shares of those fees. “The exercise of that power takes place within a legislative framework established and clarified by the EU legislature which does not need to be implemented under uniform conditions in all the Member States.”2

Concerning the violation of the Meroni case law, this decision is not applicable. Indeed, the case law solely relates to the potential for a European institution to delegate some of its powers to an EU or external body rather than conferring those powers to the Council or the Commission. In this case, the Member States confer some powers to the European Patent Office.

  • On the violation of the principle of autonomy and uniformity.

Spain argues that the entry into force of both Regulations cannot depend on the date of entry into force of the Agreement on a Unified Patent Court. 

However, the EU Legislature is of the view that the establishment of this Court is essential to guaranteeing the proper functioning of the unitary patent system and to ensure legal certainty. The Advocate General confirms this view, adding “the objective of the Regulation is to ensure such proper functioning. It would be contrary to such principles to apply the contested Regulation when the Unified Patent Court has not yet been established.”3

The principle of sincere cooperation implies that all participating Member States must take appropriate measures to implement enhanced cooperation. This includes ratifying the Agreement on a Unified Patent Court. Indeed, by refusing to ratify said Agreement, the principle of sincere cooperation would be violated, which would jeopardize the attainment of the Union’s harmonization and uniform protection objectives.

  • On the infringement of the principles of non-discrimination and of legal certainty (plea specific to Regulation No 1260/2012 on the use of languages).  

The Advocate General explains that “the choice of languages pursues a legitimate objective and is appropriate and proportionate to the guarantees and aspects which attenuate its discriminatory effect.”4(…) The Advocate General considers this limitation adequate and appropriate “because it ensures unitary patent protection throughout the territory of the participating Member States whilst enabling a significant reduction in translation costs to be achieved.”5

He also adds that “the principle of legal certainty is undeniably better safeguarded when only one language is authoritative”6 (in the case of the European patent with unitary effect, it will be the language in which the patent is filed). Indeed, if all translations had the same weight, the risk of discrepancies and legal uncertainty would be higher.

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It is important to emphasize that the Court of Justice of the European Union is not bound by the Advocate General’s Opinion. The role of the Advocate General is to suggest a legal response to the cases that might help the judges when deliberating on the case. The Advocate General’s Opinion is only an opinion that the Court of Justice follows in most cases. The Court of Justice’s decision is expected in 2015.

Finally, it must be pointed out that, as of 3 October 2014, five countries have ratified the Agreement on a Unified Patent Court: Austria, Belgium, Denmark, France and Sweden7