European Union: Advocate General Advises ECJ To Dismiss Spain’s Actions Against Creation Of Unitary Patent

On 18 November 2014, Advocate General Yves Bot issued his opinion on two cases in which Spain challenges the "unitary patent package".

The Advocate General ("AG") advises the Court of Justice of the European Union ("ECJ") to dismiss Spain's actions.

In the first case, Case C-146/13 Spain v Parliament and Council, Spain seeks to invalidate in part Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection ("Regulation 1257/2012").

First, the AG observed that Regulation 1257/2012 merely confers unitary effect on a European patent which had already been granted by the European Patent Office under the Convention on the Grant of European Patents of 5 October 1973 ("EPC") and therefore does not affect the procedure for the grant of European patents under the EPC. The AG thus refuted the alleged violation of the principle of the rule of law as the European patent with unitary effect will be granted by the European Patent Office ("EPO"), the acts of which are not subject to judicial review.

Furthermore, the AG considered that the newly created patent will provide uniform protection as envisaged in Article 118(1) of the Treaty on the Functioning of the European Union (TFEU) since it will apply throughout the territory of the Member States which are participating in the enhanced cooperation.

Second, Spain had argued that the use of the procedure of enhanced cooperation for purposes other than those set out in the Treaties amounts to a misuse of power which infringes Article 291(2) TFEU and/or is a misapplication of case law by conferring on a third party, namely the Unified Patent Court ("UPC"), the power to determine unilaterally the application of Regulation 1257/2012. The AG was of the opinion that the ECJ does not have jurisdiction to address this in an action for annulment of Regulation 1257/2012. The AG stated that the CJEU lacks jurisdiction to review the content of the Agreement on a UPC (signed on 19 February 2013) as it is an intergovernmental agreement which was negotiated and signed only by specific Member States and on the basis of international law.

Rejecting the alleged illegal delegation of the administration of the European patent with unitary effect to the EPO, the AG held that the exercise of that power takes place within a regulatory framework established and clarified by the EU legislature which does not need to be implemented under uniform conditions in all Member States.

Third, the AG also failed to agree with Spain's argument that the rules governing the entry into force of Regulation 1257/2012 (which depend on the entry into force of the Agreement on the UPC) violate the principles of autonomy and uniformity in the application of EU. The AG held that the situation at hand is compatible with Article 118 TFEU as the EU legislature clearly considered the establishment of such a jurisdiction as essential to: (i) the proper functioning of the European patent with unitary effect; (ii) consistency of case-law; and (iii) legal certainty. The AG considered that Regulation 1257/2012 cannot apply until the UPC has been established pursuant to the Agreement on a UPC.

Finally, the AG recalled that the principle of sincere cooperation requires the participating Member States to take all appropriate measures to implement enhanced cooperation, which includes ratifying the Agreement on a UPC. Consequently, the harmonisation and uniform protection objectives are still achieved.

In the second case, Case C-147/13 Spain v Council, Spain challenges Regulation 1260/2012 governing the applicable translation arrangements ("Regulation 1260/2012"). Spain contended that by designating English, French and German as the official languages of the UPC, Regulation 1260/2012, it infringes the principle of non-discrimination to the detriment of persons with no knowledge of one of those three languages. Spain also argued that the restriction of languages is not proportionate with the objective pursued.

For this part, Advocate General Bot affirmed that there is no principle of equality of languages. He stated that while discriminatory to people who do not know one of the official languages of the EPO, the choice of these three languages is: (i) legitimate; (ii) appropriate; (iii) proportionate; and (iv) provides legal certainty.

According to the AG, the current European patent system is very expensive. Thus, the language arrangements pursue a legitimate objective of reducing translation costs. Limiting the number of languages for the European patent with unitary effect is appropriate as it ensures unitary patent protection throughout the territory of the participating Member States whilst enabling a significant reduction in translation costs.

The plan for the implementation and the application of these language arrangements is, according to the AG, also proportionate (e.g. by use of a transitional period; a high-quality automatic translation system; and a compensation scheme).

Finally, the AG found that the principle of legal certainty is better safeguarded when one language is authentic as this avoids risks of discrepancies between different language versions.

The AG's Opinion is not binding on the ECJ.

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