European Union: ECJ Rejects Challenge Against Unitary Patent Package

On 5 May 2015, the Court of Justice of the European Union ("ECJ") handed down its judgments on Spain's challenges of the legality of the "unitary patent package" (Cases C-146/13 and C-147/13). In its judgments, the ECJ followed the opinions of the Advocate-General (the "AG") and rejected all the arguments advanced by the Spanish government against the unitary patent (See, this Newsletter, Volume 2014, No. 11, p. 15).

Validity of Regulation No 1257/2012

In the first case, Spain challenged the validity of 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"). To support its action, Spain relied on seven pleas in law, four of which are summarised below.

First, Spain contended that Regulation 1257/2012 is incompatible with the rule of law since the administrative procedure preceding the grant of the European patent is not subject to judicial review. The ECJ reproduced almost verbatim the AG's opinions. It held that Regulation 1257/2012 merely confers unitary effect on a European patent previously granted by the European Patent Office under the Convention on the Grant of European Patents of 5 October 1973 ("EPC") and provides a definition for that unitary effect. The ECJ added that Regulation 1257/2012 does not delimit, even partially, the conditions for the grant of European patents and does not incorporate the procedure for granting European patents laid down by the EPC into EU law.

Second, Spain submitted that Article 118 TFEU was not an adequate legal basis for adopting Regulation 1257/2012. Article 118 TFEU foresees the creation of European intellectual property rights through the adoption of measures providing a uniform protection of intellectual property rights throughout the Union. The ECJ recalled that within the ambit of enhanced cooperation, the uniform protection need not be in force in the Union in its entirety, but could apply only in the territory of participating Member States. As a consequence, the ECJ found that, since Regulation 1257/2012 establishes measures providing for uniform protection of intellectual property rights in the territory of the participating Member States, it is validly based on Article 118 TFEU.

Third, Spain contested the assignment of the power to set the level of renewal fees and their distribution share to the participating Member States acting in a select committee of the Administrative Council of the EPO. After recalling that Article 291 TFEU provides that Member States will adopt all measures of national law necessary to implement legally binding Union acts, the ECJ held that the above tasks constitute the implementation of a legally binding Union act. Therefore, it is for the Member States and not for the EU to carry out these tasks. The ECJ added that there had been no delegation to the participating Member States of implementing powers which exclusively belong to the EU legislature under EU law.

Lastly, Spain questioned the compatibility of the Agreement on a Unified Patent Court with EU law. In that regard, the ECJ noted that it did not have jurisdiction to rule on the lawfulness of an international agreement concluded by Member States.

Translation arrangements

In the second case, Spain contested the applicable translation arrangements provided for in Regulation 1260/2012. Spain believed that these arrangements infringed inter alia the principle of non-discrimination on the grounds of language.

The ECJ first acknowledged that Regulation 1260/2012 differentiates between the official languages of the European Union. It then held that the objectives pursued in Regulation 1260/2012 are legitimate since Regulation 1260/2012 aims to facilitate access to patent protection through the creation of a uniform, simple, cost-effective and legally more secure system. Finally, the ECJ found that Regulation 1260/2012 maintains a balance between the interests of economic operators and the public interest in terms of costs of proceedings and access to translations of texts and, therefore, does not go beyond what is necessary to achieve the legitimate objective pursued.

The ECJ's rejection of the Spanish challenges removes an important threat to the implementation of the Unitary Patent and brings the participating Member States one step closer to establishing the Unified Patent Court and the unitary patent regime. However, before the Unified Patent Court can be established, at least 13 Member States need to ratify the Unified Patent Court Agreement. This should be a mere formality since, to date, 7 Member States (including Belgium) have already completed ratification.

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