06 May 2015

CJEU rejects Spain’s challenge to Unitary Patent Regime

This article was written by David Nickless, Managing Associate.

The Court of Justice of the European Union yesterday dismissed Spain’s jurisdictional challenge to the Unitary Patent Regulation and related Translations Regulation.  This decision, which was widely anticipated, removes what would have been a potentially significant stumbling block to the unitary patent regime.

There were a number of strands to Spain’s arguments against the Unitary Patent. In particular, Spain contested the legality of the administrative procedure preceding the grant of a European patent, arguing that the procedure is not subject to judicial review, which undermines the principle of effective judicial protection. However, the Court rejected that argument, noting that the conditions for granting European patents were exclusively governed by the EPC and the effect of the Regulation was simply to establish the conditions under which a European patent, properly granted by the EPO pursuant to the provisions of the EPC, may benefit from unitary effect.

Spain also argued that the Regulation lacks a proper legal basis as it does not provide uniform protection for IP rights through the Union as required by Article 118 of the Treaty on the Functioning of the European Union. The argument here focused on Article 5(3) of the Regulation which provides that the acts against which the unitary patent provides protection (and the applicable limitations) will be those defined by the applicable law of the participating Member States. The Court dismissed that argument, observing that the Regulation provided uniform protection by preventing divergences in terms of patent protection in participating Member States.

Finally, Spain alleged infringement of the principle of non-discrimination on the grounds of language since the Regulation established a language arrangement which, Spain said, was prejudicial to individuals whose language is not one of the official languages of the EPO. While the Court acknowledged the language differentiation under the Regulation, it observed that there was a legitimate objective, namely the creation of a uniform and simple translation regime so as to facilitate access to patent protection. The effect of the language provisions in the Regulation, the Court said, make the patent system as a whole easier, less costly and legally more secure, and it is therefore proportionate in terms of striking an appropriate balance between the interests of applicants for Unitary Patents and the interests of other economic operators.

With the Spanish challenge defeated, preparations for the Unitary Patent and UPC can continue with discussions on fees, including renewal fees and opting out fees, which are ongoing and of considerable importance to the potential success of the unitary patent and UPC regime (as discussed in our update here), subject of course to the potential uncertainty caused by the proposed in-out referendum in the UK. 

This article was edited on 12 May 2015

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