UK: Spain’s Latest Challenges To The UPC Dismissed

Last Updated: 18 November 2014
Article by Henrietta Rooney and Ian Kirby

There was good news today for the Unitary Patent system. The AG's opinion stated that Spain's latest challenges to the UPC are unfounded, that the legal basis for the disputed regulations are valid, affirmed the role of the EPO in the new Unitary Patent system and backed the use of a limited number of languages for the new Unitary Patents. The CJEU is likely to follow the AG's Opinion (although is not bound to do so), and implementation of the Unitary Patent package will continue to progress towards a 2016/17 launch.

The Advocate General's Opinion on Spain's second challenge to the UPC, originally expected on 21st October, has been finally issued after a significant delay. The AG recommended that Spain's actions against the European Regulations implementing enhanced cooperation in the area of the creation of unitary patent protection must be dismissed. In his Opinion, the unitary protection conferred by the disputed Regulations provides a genuine benefit in terms of uniformity and integration, and the limited choice of languages considerably reduces translation costs and safeguards the principle of legal certainty.


Spain's challenges (C-146/13 and C-147/13) focussed on the legal basis of the unitary patent, the proposed language Regulations, and the involvement of the EPO in the administration of the new system. After failing in its previous joint challenge with Italy against the use of "enhanced cooperation" procedures to create the Unitary Patent system, Spain then turned to challenging the legality of the two Regulations at the heart of the Unitary Patent system (Regulation (EU) Nos 1257/2012 and 1260/2012).

The legal basis for the Directives is valid

The CJEU heard Spain's case on 1st July 2014. Notably, Spain argued that the legal basis for the Regulations was inappropriate, because it intentionally kept issues of patent validity and infringement outside EU law, and thus also outside the remit of the CJEU. The consequence of this, according to Spain's challenge, was that by creating a Unitary Patent system, the Directives do not actually harmonise Member States' Law.

The AG's opinion addressed this harmonisation issue by stating that the sole purpose of the Regulation is to allow for unitary effect of a European Patent, and that uniform protection brings a real benefit in terms of harmonisation and integration.

On the subject of the new Unitary Patent Court, which will itself be outside the remit of the CJEU, the AG took the view that he, and the CJEU, did not have the jurisdiction to review the content of the Agreement on the UPC. The Agreement that creates the UPC is an intergovernmental agreement negotiated and signed only by certain Member States on the basis of international law, and as such the CJEU has no jurisdiction. In any case, the AG noted, the creation of the UPC provides enhanced cooperation in the area of Unitary Patent protection, and the establishment of the UPC is essential. Member States participating in the UPC Agreement are bound by the EU principle of sincere cooperation, and therefore must ratify the UPC Agreement to help achieve the objectives of harmonisation and uniform protection within the EU. Consequently, there is no problem associated with the implementation of an EU regulation being dependent on the separate UPC Agreement, even though it has been made outside of the framework of EU Law.

The regulation does not contravene the Meroni principle

Spain also challenged the Regulations, based on what it saw as the delegation of powers to the EPO. Spain believed that such delegation would be contrary to the Meroni principles, which limits the delegation of powers by Community institutions. In delegating powers to the EPO to administer the Unitary Patent and to collect, apportion and distribute renewal fees for unitary patents to member states, Spain argued that the Commission had delegated powers that it did not actually possess, and that the powers were delegated with insufficient control, which would lead to an imbalance of power between institutions. Delegation of powers to the EPO was also challenged on the grounds that the EPO does not apply EU law and is not subject to judicial review by the CJEU.

Involvement of the EPO in the Unitary Patent System is essential, and the AG also dismissed this part of the challenge, stating that the sole purpose of the contested Regulations is to allow for universal recognition throughout Europe of a patent already granted under the existing provisions of the EPC. The Regulations provide an additional characteristic for European patents, but do not change the procedure administered by the EPO. The AG's Opinion also notes that the participating Member States have the power to set the level of renewal fees for European patents having unitary effect.

The linguistic regime is appropriate and proportionate

Spain also argued that the proposed linguistic regime for the UPC unfairly advantaged those whose mother tongue is English, French or German. In a similar approach to the attack on delegation of powers relating to renewal fees, Spain also challenged delegation of powers to the EPO to administer the publication of translations as contrary to the Meroni principle. This part of the challenge came as no surprise, given Spain's history of challenging the linguistic regime of European patents. The AG's Opinion deals with this language issue in a pragmatic way. While acknowledging that discrimination would occur against persons who do not know any of the official languages (English, French or German), the AG's view was that any such discrimination was outweighed by the advantages of using only these languages. The choice of official languages has been made to enhance legal certainty, avoid excessive translation costs, and to reflect the linguistic reality of the existing patent system in Europe. In pursuit of these legitimate objectives, the AG's Opinion was that the proposed linguistic regime was appropriate and proportionate.


This latest development may not be the end of Spain's campaign, but it comes as a relief that the AG today recommended the dismissal of all of Spain's challenges. The CJEU is likely to follow this opinion; the political landscape also cannot be ignored, all of which currently points to the launch of the Unitary Patent package in 2016/17.

The full press release is available here.

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