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.

Background

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.

Summary

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.

Need advice?

For more information, please contact email@carpmaels.com.

Carpmaels & Ransford LLP is a leading firm of European patent attorneys based in London. For more information about our firm and our practice, please visit our website at www.carpmaels.com.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions