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Unitary patent update – the CJEU says “no” to Spain and Italy


29th Apr 2013

On 16th April 2013, the Court of Justice of the European Union (CJEU) dismissed Spain and Italy’s challenge to the proposed unitary patent system, bringing the unitary patent a step closer to reality.

In May 2011, Spain and Italy contested a decision by the Council of the European Union authorising the use of the enhanced cooperation procedure to create a unitary patent system. Although the challenge stemmed from Spain and Italy’s disapproval of the proposed use of only English, French and German for translating patents granted under the unitary patent system, the arguments put forward by Spain and Italy questioned the legal mechanisms used to create the unitary patent system.

However, in its 16-page judgment the CJEU rejected all five arguments put forward by Spain and Italy. Firstly, the CJEU decided that the Council was competent to establish the enhanced cooperation that led to the unitary patent agreement, on the basis that Article 118 of the Treaty on the Functioning of the European Union (TFEU), which forms the legal basis for the Unitary Patent Regulation and the associated Language Regulation, provides competencies within the ambit of the functioning of the internal market and shared between the Member States and the Union. The CJEU rejected Spain and Italy’s suggestion that the competencies conferred by Article 118 TFEU fall within the ambit of the exclusive competence of the Union as provided for by Article 3(1)(b) TFEU. Additionally, the CJEU decided that the Council did not misuse its powers in authorising the use of enhanced cooperation.

Perhaps unsurprisingly, the CJEU also decided that there had been no breach of the condition that any decision authorising the use of enhanced cooperation must be adopted as a last resort. Whilst the CJEU did not explore the exact scope of the phrase “last resort”, it seems satisfied that the Council correctly assessed all of the facts when reaching its decision to authorise the use of enhanced cooperation. The CJEU makes reference to the fact that the discussion of the unitary patent at Union level started during the year 2000 and had failed to lead to an agreed unitary patent framework prior to the proposal for enhanced cooperation in December 2010.

A further plea submitted by Spain and Italy was the suggestion that the creation of a unitary patent covering only part of the Union would damage the uniformity presently afforded by the EPC, which is compatible with the legislation of all Member States. However, the CJEU rejected this argument on this basis that European patents granted in accordance with the EPC do not confer uniform protection across all Contracting states, but rather convey protection, in each Contracting State, whose scope is determined by national law. The CJEU contrasts this with the aim of the unitary patent, which is to provide uniform protection across all Member States.

Finally, the CJEU dismissed the suggestion that the Council showed disregard for the judicial system of the Union by not specifying details of an envisaged judicial system when authorising enhanced cooperation. Specifically, the CJEU decided that the Council was not obliged to provide such information, but rather the sole purpose of the Council’s decision was to authorise the use of enhanced cooperation by the requesting Member States. In the CJEU’s view it is the responsibility of those Member States, having been granted the use of enhanced cooperation, to set up the unitary patent and associated rules, including, if necessary, specific rules in the judicial sphere.

Clearly, the CJEU’s decision removes a large hurdle from the long road to a working unitary patent system. However, many more hurdles remain, not the least of which are the two outstanding actions brought by Spain before the CJEU against the Unitary Patent Regulation and the associated Language Regulation. A functioning unitary patent system is therefore not expected until 2015 at the earliest.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

Author
Ian Dowling
Senior Associate
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Would you like to know more? You can talk to Ian Dowling who will be able to help. Call +44 (0)20 7242 0901

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