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EU Unitary Patent System Challenge Unsustainable: Advocate General

By Saukshmya Trichi – Edited by Ashish Bakshi Advocate General’s Opinion in Case C-146/13 Spain v Parliament and Council and C-147/13 Spain v Council. Press release No.152/2014: November 18, 2014 European union concept, digital illustration.In an opinion released by the Advocate General (“Opinion”) of the Court of Justice of the European Union (“Court”), it has been urged that Spain’s challenges to two implementing regulations of the Unitary Patent System be dismissed. The Court is still deliberating on the challenges and the Opinion though not binding is likely to be of persuasive value. In 2012, member states of the European Union (EU) agreed to create a unitary patent system, consisting grant of a Unitary Patent and establishing a Unified Patent Court, which would guarantee supranational protection for inventions in 25 countries across Europe. This system would co-exist with national patents and with classical European patents for states that do not participate in the scheme, such as Spain, Italy, etc. More information on the structure and functioning of the system is available on the website of the European Patent Office (EPO). On December 17, 2012, Regulation (EU) No. 1257/2012 was adopted, which laid down the procedural framework to implement enhanced cooperation in the area of the creation of unitary patent protection; and Regulation (EU) No. 1260/2012 was adopted to create a framework with regard to translation arrangements. In March, 2013 Spain challenged these regulations in cases C-146/13 and C-147/13 principally on the ground that the power delegated to the EPO for administering the unitary patent system was improper in view of the genesis of the EPO which functions by virtue of the European Patent Convention (EPC), while the unitary system is formulated under the aegis of legal system of the European Union. Spain also alleges that decisions of the EPO not being subject to judicial review will cause prejudice and further that limiting choice of language to English, French and German was discriminatory against states having different official languages. The Opinion, the actual text of which is still unavailable, counters Spain’s allegations relying heavily on the premise that the unitary system is intended to “provide a genuine benefit in terms of uniformity and integration, whilst the choice of languages reduces translation costs considerably and safeguards better the principle of legal certainty”. In summary, the Opinion affirms the intent behind creation of the unitary system as follows:
  • The regulation only attributes to European patents an additional characteristic, namely unitary effect, without affecting the procedure regulated by the EPC.
  • The protection conferred is regulated by the uniform implementation provisions of the regulation.
  • The regulation provides for national law to be applicable in determining the scope of protection and enforcement. Thus, European patent will be subject to the national law of a single Member State and that legislation will apply throughout the territory of the Member States participating in the enhanced cooperation.
  • As regards the Unified Patent Court, the Court does not have jurisdiction to review the content of the Agreement on a Unified Patent Court in an action for annulment of the regulation. This Agreement is an intergovernmental agreement, the purpose and scope of which is different from the regulation under challenge.
  • As regards the language arrangements, the European Union law has no principle of equality of languages. The choice of languages pursues a legitimate objective and is appropriate and proportionate to the guarantees and aspects that attenuate its discriminatory effect.
  • To limit the number of languages for the European patent with unitary effect is 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.
  • This also acknowledges the linguistic realities of the patent sector, especially as most scientific papers are published in German, English or French; which are also spoken in the Member States from which most of the patent applications in the EU originate.
Spain’s challenge does raise an important question with regard to the scope of legislating and division of powers within the EU. The unitary patent system poses an interesting question - whether an administrative body (EPO) created by an agreement (EPC) between member states of the EU can be delegated powers by the Regulations which have the force of a law passed by the European Parliament and the Council of the EU. It may well be, as asserted in the Opinion, that the Regulation is only an implementation mechanism to give effect to the understanding between member states. However, Spain’s challenge that the decisions of the EPO cannot be subject to judicial review will be prejudicial under the unitary system appears untenable, as Article 9 laying down the administrative tasks to be carried out, also states that national law of Member States will afford legal protection in cases against EPO decisions. The unitary patent system does have expected advantages especially with regard to reduction in prosecution costs as well as streamlined enforcement mechanisms. However, its simultaneous existence with the national and European patent systems could lead to confusion as well as overlap of jurisdictions. Furthermore, on coming into effect, the signatory states are likely to be bound to the unitary system and patent filers are unlikely to have the ability to choose between the regimes. The Opinion however clarifies that the nature, conditions for grant and effects of unitary protection cover only the phase subsequent to the grant of the European patent. The feasibility of this approach in practice can only be envisioned once the system starts functioning. Rouse Legal and Patentlyo summarize Spain’s allegations as well as an overview of the Opinion. Kluwer Patent Blog comprehensively summarizes the views put forth in the Opinion.