Unified Patent Court Archives - Page 3 of 6 - UPC Blog by amar goussu staub

20 October 2015

Consultation on Court Fees: What were the public responses ?

In May 2015, the IPO and CIFA organised a consultation on Court Fees. See our post here. In July, the UPC Blog participated to the webinar organised by both organisations and summarised for you the Background of the consultation, The Issues at stake in the consultation document and the Discussion that followed between the participants. These can be found here.

Finally, in its October Newsletter (See below), the EPLAW reveals that 146 responses were received, 68 from the Italian Chambers of Commerce, and identified the main issues raised by the participants:

greater clarity is required where multiple parties / patents are involved
the guidelines for the calculation of value-based fees should be published for comment
no value-based fee should be payable for a counterclaim for revocation the opt-out fees should be lower than 80 Euros
there is divided opinion on the desirability of alternative one as compared to alternative two to aid SMEs
the caps on recoverable costs are too high at the lower values of cases.
there should be a value-based fee for an application for a preliminary injunction

These responses were presented to the Preparatory Committee on 19th October who will present a final draft of Court Fees in February 2016 after negotiating with Member States.

19 October 20153 November 2017

EPLAW updates on the training of UPC Judges:

The European Patent Lawyers Association issued a statement to its members detailing the different training initiatives developed by the EPLAW and the EPO for candidate UPC Judges.

It appears that in 2015, the EPO Academy ran two training modules for potential UPC judges who had little judicial experience in patents or who were from countries with limited patent litigation, in which they were introduced to basic patent law and patent litigation by well-known European judges and European litigators. The EPLAW in parallel produced e-learning materials which will be published on the EPO’s website before the end of 2015.

2016 will see more training initiatives being organised. The EPLAW notably announces that it will assist the EPO with its standard training programme on infringement and litigation for judges with no or little experience in patent litigation in the EPC countries, and act as representatives in mock trials. Finally, the EPO Academy plans “to run workshops and mock trials for those experienced European patent judges who have applied to be UPC judges concentrating on familiarising them with the Rules of Procedure and the Agreement of the UPC”.

30 September 20153 November 2017

The training of the UPC Technical Judges has started in Strasbourg.

The training of the UPC technical judges started last week (on 24th September 2015) at the CEIPI in Strasbourg. The programme will be taught over a period of three weeks between September and November 2015, and from Thursday to Saturday, in order to facilitate the attendance of the participants.

Designed specifically for the UPC technical judges, the training “addresses the specific legal skills that judges must have, and includes as well the training on the fundamentals of fair trial and due process in the context of patent law. The program encompasses a range of intensive thematic and specialized modules, particularly crafted to respond to the needs of technically qualified judges.” It thus aims at ensuring that the participants have a sufficient knowledge of the law while offering specialised trainings on a range of key technical issues of tailored to the Unified Patent Court context.

It is divided between three modules and eight topics. Module 1 looks at “Judicial Ethics“, “The UPC fundamental principles and fair trial“, “Competition law and the UPC” and “Legal Skills“. Module 2 focuses on “Applicable substantive law and patent holder rights” and “The UPC and its rules of procedure“. Finally, Module 3 is concerned with “Enforcement” and “Expertise and Witnesses“. In order to meet the challenges of training these new technical judges on a theoretical and practical level the training will be structured around lectures “combined with a intense analysis of jurisprudence and practical exercises, including workshops with case studies and two moot court exercises“.

7 July 2015

An update on the UPC consultation on Court fees and recoverable costs and the issues that this consultation raises:

On 23rd June was organised in London by the IPO and CIPA an event on the consultation launched in May by the Preparatory Committee on Court fees and recoverable costs. The consultation focuses primarily on Court fee structure, SMEs support, Opt-out and Recoverable costs. This event aimed at raising issues relevant to the consultation and encouraging responses from the general public.

You can see our post on the consultation here. The consultation documents can be found here. You can participate to the consultation by clicking here. The link to the video of the IPO and CIFA event can be found here.

The UPC Blog participated to the webinar and has summarised for you the Background of the consultation, The Issues at stake in the consultation document and the Discussion that followed between the participants.

I. The background of the consultation:

The background was presented by Janis Makarewich-Hall (Head of UPC Taskforce at the IPO) who insisted that the court fees consultation document does not represent “a done deal”. The contents of this document could in fact evolve following the results of the consultation.

Janis Makarewich-Hall explained that the propositions listed in the consultation document had first been circulated to all participating member states but that the responsibility for the fee structure was split between two committees: the legal and finance committees.

Part of the finance committee’s work is to calculate the court fees so that the court is self-sustaining by the end of the transitional period, this consequently entails a regular review of the fee structure. The structure however follows completely new rules specific to the Unified Patent Court and unrelated to national norms that were considered inappropriate.

II. What are the main points of the consultation?

Counter claim for revocation: The main issue at stake is whether a value-based fee (or high fee) is established or whether a low fixed fee is a better choice. The UK wanted a low fixed fee as it fears that a value-based fee could be seen as an impairment to the defence. The compromise that was suggested by the expert panel was to have both fees combined.

SMEs : The second issue that is addressed by the consultation is the impact of the court fee structure on SMEs. In order to avoid adopting a fee structure that would be detrimental to SME a few options were considered. Some states wanted to focus and promote behaviours favoured by SMEs, such as early settlement. Others wanted more direct support with either reductions of fees or no value based fees. The consultation documents includes these two options and the public is invited to comment on what they think more suited to SMEs.

Recoverable costs: The maximum ceiling of 3 millions for recoverable costs has been controversial and some states have expressed their concerns considering that it is too high and therefore should be reduced.

Opt-out fee: Most member states felt that 100 euros would have been fair (after taking into consideration the administrative costs of the Opt-out procedure) based on an EPO estimate. A compromise of 80 euros was however agreed.

The consultation is opened until 31^st July. All the responses will then be sent to the Preparatory Committee, which will take the final decision in its December and February meetings.

III. Discussion of the key points:

In the second part of the event the participants were invited to critically assess the propositions submitted in the consultation document.

Court structure fees (Kevin Mooney, Simmons & Simmons):

Under Article 36, during the transitional period, the UPC is financed by litigants and its budget is balanced by member states’ contributions. However it is important to note that the budget of the court has not yet been published; it is thus impossible for users to know the financial assumptions underlying the level of court fees which justify the current fee structure.

The fees are fixed by the Administrative committee, and will evolve in line with the needs of the court. The fees are at the moment divided between fixed fees and value based fees. It is however not yet known when the value based fee will apply. Under article 370 there are 7 fixed fees with an additional value based fee, and 18 fixed fee only actions. The fixed fees start at 80 euros for the opt-out and go up to 20,000 euros for the revocation. Value-based fees will cost up to 220,000 euros for the most valuable cases (more than 30 millions). The guidelines that will determine the method of assessment of the value-based fee have not been published yet but it appears that the case will be valued on a notional royalty for the period of the alleged infringement. Moreover, the valuation should relate to the whole action.

One issue highlighted by Kevin Mooney is the fact that under Article 70, value-based fees should be paid in advance which reveals a problem of timing as the value might not be known from the start. Targeted support measures for small and medium-sized enterprises and micro entities may be considered. However the word “may” highlights the fact that it is not compulsory.

Kevin Mooney suggested moreover to consider the following questions when responding:

A value based fee for infringement action and for an application to determine damages will apply, when the fee should have initially covered the whole action. The same applies to appeals as the consultation document shows that there could be a further fee payable on appeal. So does this amount to a double payment of a value-based fee by the applicant ?
Should the value based fee element have been removed from the revocation actions? Should someone counterclaiming for infringement in a revocation action have to pay a value based fee? Is a value based fee appropriate for appeal actions? Is the Court not getting double fees in some circumstances?

Fee structure and SMEs (Justice Birss):

The consultation proposes three alternatives for the fee structure concerning the SMEs:

Alternative 1 : would apply to SMEs only , which would have discounts based on the behaviours of SMEs such as the use of a single judge or early settlements.
Alternative 2 : would apply to SMEs and Universities, Public Organisation, micro-entities and Public research organisations. All of them could be exempt from value based fees.
Alternative 3 : would apply to any entity whose economic stability would be threatened.

Justice Birss further highlighted two more systems that could benefit SMEs :

The first one is a cap on recoverable costs which would support SMEs. This has already proved effective in other jurisdictions but the necessary and appropriate levels would need to be discussed and agreed.
The second one would be a definition of what attracts value based fees that take directly take into consideration the needs of SMEs. A value-based fee for infringement for example would very detrimental to SMEs.

Opt out (Richard Vary, Nokia):

As Richard Vary explained, a fee for opting-out and opting back in will apply to deter companies opting all or most of their patents in fear of the new court. The fee will be 80 euros for opt-out fees.

The opt-out fee however raises questions. Applicants will in fact be charged for a system they do not want to use and will therefore subsidise a system that they decided to leave. The direct financial consequence of that will be that the more people opt-out, the more money the court receives but the less work it has to do.

Richard Vary also suggested that there should be a reduced opt-out fee for patentees who want to opt-out more than one patent, as he believes the administrative costs is unlikely to increase when dealing with patents that all belong to the same patentee.

Recoverable costs (Alan Johnson, Bristows):

It is important to note first that recoverable costs under article 69(1) include legal representation, court fees, and costs incurred in court. However it appears that the table of recoverable costs caps that is submitted in the consultation document only relates to the legal representation; court fees would thus be recoverable on top of this.

Another issue arises with recoverable cost caps, which should apply per action. However if a patentee brings a case for infringement and validity, should it be considered as one or two actions ?

The assessment of the value is also a problem as it is unclear whether the “value of action” is to be necessary the same as that assessed for the value based-fee. The following problem may occur: if patentees assess a large value for theirs patents they can therefore recover a large amount of costs, if defendants on the contrary, only see this action as being of a small value they would therefore only recover small costs. So Alan Johnson argues that there is a risk that “recovery is determined by who starts the action”.

In case of multiple defendants there is also a question of whether it is possible for the applicant to recover multiple costs from multiple defendants. Is the payment shared between all the defendants? On the contrary if the defendants win do they all get their costs?

The problem of VAT is also a further point to consider when responding to the consultation as whether the value of action includes VAT, or what would happen if one party is registered for VAT while another is not, are not addressed in the consultation document.

The consultation closes on 31st July and as the panel explained there is no particular structure to the consultation as far as the responses are concerned. However, it was also noted that comments along the four topics discussed (counterclaims for revocation, SMEs, the opt-out and recoverable costs) might be a good place to start…

23 June 2015

Has Spain changed its mind about the Unitary patent package since its actions were dismissed by the CJEU?

Has Spain changed its mind about the Unitary patent package since its actions were dismissed by the CJEU? According to the Confederation of Employers and Industries of Spain, it has not and the Spanish industry is much better off outside the system…

A few weeks after Spain’s actions were dismissed by the ECJ, the Kluwer Patent Blog publishes an interview of the Confederation of Employers and Industries of Spain (CEOE), in which the Confederation explains why they strongly support Spain’s government’s opposition to the Unified Patent Court and the Unitary Patent and why they wish to remain out of the UPC Agreement.

It appears unambiguously that the CEOE believes that “the UPC Agreement will not be beneficial to most EU entreprises and will be very detrimental to SMEs” justifying therefore CEOE’s strong opposition to the Unitary Patent package.

The CEOE’s main concern in that respect is the language regime adopted by the UPCA , namely the fact that the unitary patent will have to be filled in English, French or German. For the CEOE “this gives a competitive advantage to enterprises which use one of these languages, to the detriment of enterprises of other Member States.” An example for the CEOE of the unsuitability of the trilingual language regime is the EPO which it considers to be “inefficient and expensive“.

The CEOE further justifies Spain’s position towards the UPC Agreement by arguing that Spanish companies will be able to enjoy all the benefits of the UPCA without the inconvenient as they “will not be obliged to respect in Spain Unitary Patents which have been granted without a Spanish translation with legal effects. Nor will Spanish companies be exposed to lawsuits over products and activities developed in Spain, before a Unified Patent Court in a foreign country and in a foreign language.” The CEOE finally insists that the UPCA, and in particular the court fees, have not been designed with SMEs in mind. The CEOE argues notably that “only big companies will be able to litigate. If SMEs are sued for infringement, they will have to give up, even if the patent of the plaintiff is invalid“.

It appears therefore that there is still a very strong opposition to the Unitary Patent package in Spain and that as a consequence Spain will not in the near future be part of the UPC Agreement.

9 June 2015

UPC Court fees event in London organised by the UK IPO on 23rd June

The UK Intellectual Property Office is organising an interactive event on the UPC Court fees on Tuesday 23rd June in London (registration details here). This event co-hosted with CIFA and the IP Federation will be structured around a panel of experts discussing the key elements of the UPC Court fees. Justice Birss, Kevin Mooney, Alan Johnson and Richard Vary have been confirmed for the panel.

A live and interactive webinar on the UPC Court fees is also announced by the UKIPO, details of which will be published later this month.

5 June 2015

ESOMA’s challenge of the UPCA before Belgium’s constitutional court dropped

We highlighted in May that the European Software Market Association was challenging the Unitary Patent before the Belgian Constitutional Court. ESOMA in fact believed that the Unitary Patent “violated the Belgian Constitution (by denying) Belgians equality before the law, (by discriminating) on basis of language, (by violating) the separation of powers, and (was) an illegal political maneuver by the European Patent Office”.

However the Court declared on 21 st May 2015 that ESOMA’s request was inadmissible, as it appeared that the claim was filed after the 60 day period within which the Consituational Court could address the constitutionality of Belgian laws. The law allowing the ratification of the UPCA was in fact published in the Moniteur Belge on 09th September 2014 while ESOMA’s request was only filed on 09th March 2015. The Constitutional Court therefore did not have a chance to look into details in ESOMA’s claims and declined to consider the substantial issues allegedly at stake.

After the ECJ decision opposing Spain and the European Commission, this is thus the second decision in favour of the UPC, clearing the way for its planned entry into force in 2016.

The Belgian Constitutional Court decision can be found here.

22 May 20156 September 2019

The Unified Patent Court and the Brussels 1 Regulation (recast): How has the Regulation been modified?

How was the Brussels I Regulation modified in order to accommodate the Unitary Patent and the Unified Patent Court?

Article 89 of the UPC Agreement makes the entry into force of the Agreement dependent upon, among other conditions, the entry into force of the amendments to Regulation (EU) N° 1215/2012 or Brussels I Regulation (recast). The Brussels I Regulation (recast) was adopted on 12 December 2012 to replace Regulation (EC) N°44/2001, and its provisions apply since 10 January 2015 (Article 81 Regulation N°1215/2012). The need to amend the Brussels I Regulations arose because:

Under Article 71 of Regulation No 44/2001, Member States were prevented from concluding any new convention that, in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments
The UPC Agreement does not lay down its own rules on international jurisdiction –since the rules on international jurisdiction, recognition and enforcement of judgments concerning the disputes falling within the competence of the UPC had previously been unified within the EU through the Brussels I Regulation;
Article 31 of the UPC Agreement states that the international jurisdiction of the UPC shall be established in accordance with Regulation N°1215/2012.

The Brussels I Regulation (recast) sets out a harmonised recognition and enforcement of foreign judgment rules in civil and commercial matters within the European Union. Regulation N° 1215/2012 is a recast version of the prior Brussels I Regulation, which had been in force since 1 March 2002. The recast Regulation applies to legal proceedings commenced in the courts of EU Member States on or after 10 January 2015; the Brussels I Regulation however continues to apply to legal proceedings commenced before that date. Both Regulations apply to all EU Member States and in order to ensure a consistent application of the Regulation throughout the European Union, any national court or tribunal is able to refer a question of interpretation of the Regulation to the Court of Justice of the European Union (CJEU).

The basic rule of jurisdiction established by the Regulation is that the defendant must be sued in the courts of the Member State in which she is domiciled. A defendant who is domiciled in one Member State may only be sued in the courts of another Member State to the extent authorised by the Regulation. The introduction of the unitary patent however led to some modifications of that rule, now contained in the Brussels I Regulation (Recast). The Unified Patent Court will in fact have jurisdiction over claims regarding the unitary patent where a defendant is domiciled in a Member State (art 71b(1) and art 71a). Where the defendant is not so domiciled then it will also have jurisdiction where a person consents to the UPC’s jurisdiction (art 71b(2))or where the patent is infringed causing damage within the EU and the defendant has property located in a country which is party to the Agreement on a Unified Patent Court and the dispute has a significant connection with any Member State to the UPC (art 71b(3)).

All necessary changes relating to the UPC Agreement are combined in four new provisions all contained in Article 71, which states:

“1. This Regulation shall not affect any conventions to which the Member States are parties and which, in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments.

2. With a view to its uniform interpretation, paragraph 1 shall be applied in the following manner:

(a) this Regulation shall not prevent a court of a Member State which is party to a convention on a particular matter from assuming jurisdiction in accordance with that convention, even where the defendant is domiciled in another Member State which is not party to that convention. The court hearing the action shall, in any event, apply Article 28 of this Regulation;

(b) judgments given in a Member State by a court in the exercise of jurisdiction provided for in a convention on a particular matter shall be recognised and enforced in the other Member States in accordance with this Regulation.

Where a convention on a particular matter to which both the Member State of origin and the Member State addressed are parties lays down conditions for the recognition or enforcement of judgments, those conditions shall apply. In any event, the provisions of this Regulation on recognition and enforcement of judgments may be applied.”

In order to ensure the coherent application of the UPC Agreement and the Brussels I Regulation (recast) , it was in fact necessary to address the following issues in the Brussels I Regulation (recast):

Clarify in the text of the Regulation that the Unified Patent Court and the Benelux Court of Justice are ‘courts’ within the meaning of the Brussels I Regulation:

By clarifying that both the Unified Patent Court and the Benelux Court of Justice should be considered as “courts” within the meaning of the Brussels I Regulation (recast), it ensures that the international jurisdiction of these courts will be determined by the Brussels I Regulation. It in particular ensures that defendants which would expect to be sued in a specific Member State on the basis of the rules of the Brussels I Regulation may be sued before either a division of the Unified Patent Court or before the Benelux Court of Justice which is located in another Member State than the national courts designated on the basis of the Brussels I Regulation. Legal certainty and predictability for defendants requires that this change of territorial jurisdiction is set out clearly in the text of the Brussels I Regulation.

Clarify the operation of the rules on jurisdiction with respect to the Unified Patent Court and the Benelux Court of Justice insofar as defendants domiciled in Member States are concerned. Create uniform rules for the international jurisdiction vis-à-vis third State defendants in proceedings against such defendants brought in the Unified Patent Court and Benelux Court of Justice in situations where the Brussels I Regulation does not itself provide for such rules but refers to national law;

The new rule in Article 71b, paragraph 1 prescribes that the Unified Patent Court and the Benelux Court of Justice will have jurisdiction any time when a national court of one of the respective Contracting Member States would have jurisdiction based on the rules of the Brussels I Regulation. On the contrary, the Unified Patent Court and the Benelux Court of Justice will not have jurisdiction when no national court of a Contracting Member State has jurisdiction pursuant to the Brussels I Regulation.

Define the application of the rules on lis pendens and related actions in relation to the Unified Patent Court and the Benelux Court of Justice on the one hand and the national courts of Member States which are not Contracting Party to the respective international agreements on the other hand. Define also the operation of these rules during the transitional period referred to in Article 83(1) UPC Agreement:

The new proposal in Art. 71b, paragraph 2 extends the Regulation’s jurisdiction rules to disputes involving third State defendants domiciled in third States. In addition, the Unified Patent Court’s and Benelux Court of Justice’s jurisdiction to issue provisional, including protective measures is ensured even when the courts of third States have jurisdiction as to the substance of the matter.

As a result of this extension, access to the Unified Patent Court and the Benelux Court of Justice will be ensured in situations where the defendant is not domiciled in an EU Member State. In addition, such access is ensured independently of which instance or division within the Unified Patent Court is seized of a claim.

In addition, the new proposal in Art. 71b, paragraph 3 establishes one additional forum for disputes involving defendants domiciled outside the EU. The proposal provides that a non-EU defendant can be sued at the place where moveable assets belonging to them are located, provided their value is not insignificant compared to the value of the claim and that the dispute has a sufficient connection with the Member State of the court seized. The forum of the location of assets balances the absence of the defendant in the Union.

Clarify the operation of the rules on recognition and enforcement in the relations between Member States which are and Member States which are not Contracting Parties to the respective international agreements:

The new rule in Art 71c prescribes that the rules on lis pendens and related actions of the Brussels I Regulation (recast) apply between the Unified Patent Court or the Benelux Court of Justice on the one hand and the courts of non-Contracting Member States on the other hand. Finally, this Article also prescribes that the rules of the Brussels I Regulation (recast) apply when, during the transitional period referred to in Article 83(1) UPC Agreement, proceedings are brought before the Unified Patent Court on the one hand and before the national courts of Contracting Member States to that Agreement on the other hand.

Art. 71d regulates the recognition and enforcement of judgments of the Unified Patent Court and the Benelux Court of Justice in Member States which are not Contracting Parties to the respective international agreements, as well as the recognition and enforcement of judgments given in Member States which are not Contracting Parties to these agreements in matters governed by such agreements which need to be recognised and enforced in Member States Contracting Parties to the international agreements.

19 May 2015

UPC Public Consultation on court fees and recoverable costs – open until 31st July

The Unified Patent Court has opened its public consultation on the rules on court fees and recoverable costs. The consultation will close on 31st July 2015, and all contributions should be sent to secretariat@unified-patent-court.org.

The consultation document presents two options for a revised Rule 370, a table of fees, a scale of ceilings for recoverable costs and an Explanatory Note. As well as proposing fee levels, the consultation also addresses :

support for small and medium-sized enterprises (SMEs), not for profit organisations and certain other bodies as set out in the Agreement by providing two possible options
the threshold at which a value-based fee will be payable
a scale of ceilings for recoverable costs

One point to take into consideration however in evaluating the proposed fee structure is that “the fee structure for the Unified Patent Court will comprise fixed fees and, for certain actions, an additional value based fee. The fee levels proposed are the lowest that will enable eventual sustainability of the Court”…

19 May 2015

Spain v Council of the European Union: A quick overview of the CJEU judgment

On 5^th May 2015 the CJEU dismissed both of Spain’s actions against the regulations implementing enhanced cooperation in the area of the creation of unitary patent protection. Spain sought the annulment of the two regulations forming part of the unitary patent package package, namely the regulation on the creation of unitary patent protection (Case C-146/13) and the regulation governing the applicable translation arrangements (Case C-147/13). This post will look at the findings of the Court in dismissing Spain’s actions.

The UPC Blog by LAVOIX has also published a comprehensive post looking the whole course of these cases opposing Spain, Italy and the Council of European Union. It looks at Spain and Italy’s pleas, the opinion of the Advocate General Yves Bot and the Findings of the Court.

The UPC Blog by LAVOIXalso covered the Advocate General’s opinion in a separate post that can be found here.

The Court looked at Spain’s please in relation to Regulation EU 1257/2012 and EU 1260/2012. Its findings are explained below:

First, regarding Regulation EU 1257/2012:

Concerning the issue raised about judicial review: The Court rejected Spain’s argument by pointing out that the regulation is in no way intended to delimit, even partially, the conditions for granting European patents – which are exclusively governed by the EPC – and that it does not incorporate the procedure for granting European patents laid down by the EPC into EU law. The Court stated that the regulation merely “(i) establishes the conditions under which a European patent previously granted by the European Patent Office pursuant to the provisions of the EPC may, at the request of the patent proprietor, benefit from unitary effect and (ii) provides a definition of that unitary effect”.

Concerning Article 118 TFEU and uniform protection: The Court pointed out that unitary patent protection is apt to prevent divergences in terms of patent protection in the participating Member States and, accordingly, provides uniform protection of intellectual property rights in the territory of those States.

Concerning the Infringement of Article 291(2) TFEU: The Court observed that the EU legislature did not delegate any implementing powers which are exclusively its own under EU law to the participating Member States or the European Patent Office. Hence, in that regard that, according to the TFEU, it is for the Member States to adopt all measures of national law necessary to implement legally binding Union acts.

Second, regarding Regulation EU 1260/2012:

Concerning the breach of the principle of non-discrimination: The Court emphasised that “the regulation has a legitimate objective, namely the creation of a uniform and simple translation regime for the EPUE (European Platform of Universities engaged in Energy Research, Education and Training) so as to facilitate access to patent protection, particularly for small and medium-sized enterprises”. The language arrangements established by the regulation is as a whole “easier, less costly and legally more secure”.

Concerning the disregard of the Meroni case law: The Court held that if that the EPO is given additional tasks, it is “a consequence of the fact that the participating Member States, as contracting parties to the EPC, entered into a special agreement within the meaning of Article 142 of the EPC”. The Court thus added that “since the Council did not, contrary to what is asserted by the Kingdom of Spain, delegate to the participating Member States or to the EPO implementing powers which are uniquely its own under EU law, the principles set out by the Court in the judgment in Meroni v High Authority (9/56, EU:C:1958:7)” cannot apply.

Concerning the lack of a legal basis for Article 4 of the contested regulation: “the second paragraph of Article 118 TFEU does not preclude, when the language arrangements for European intellectual property rights are being determined, reference being made to the language arrangements of the organisation of which the body responsible for issuing the intellectual property right to which unitary effect will be attributed forms part. It is moreover of no relevance that the contested regulation does not establish an exhaustive body of rules for the language arrangements applicable to the EPUE. The second paragraph of Article 118 TFEU imposes no requirement on the Council to approximate all aspects of the language arrangements for intellectual property rights established on the basis of the first paragraph of Article 118 TFEU. As regard Article 4 of the contested regulation, it is clear that this provision is directly part of the language arrangements for the EPUE, since it sets out the special rules governing the translation of the EPUE in the specific context of a dispute. Since the language arrangements for the EPUE are defined by all the provisions of the contested regulation and more specifically Articles 3, 4 and 6, which are intended to apply to different situations, Article 4 of the regulation cannot be detached, with respect to the legal basis, from the remainder of the provisions of the regulation.” In the light of these arguments, the Court dismissed the argument that article 4 must be rejected.

Concerning the infringement of the principle of legal certainty the Court looked at:

The alleged absence of costs ceiling or method of establishing the compensation scheme, the court followed the opinion of Advocate General Yves Bot, and found that, under Article 9(2) and Article 9(1) of Regulation No 1257/2012 a decision on the costs ceiling or the method of establishing the compensation scheme are matters which fall through a select committee of the Administration Council of the European Patent Organisation to the participating Member States, as Contracting States to the EPC.
The fact that it is only the patent in the language in which it has been issued which produces legal effects and not the translation and concluded that “does not create any legal uncertainty, since it enables the operators involved to know with certainty which language is authentic in order to assess the extent of the protection conferred by the EPUE”.
Whether the omission to indicate the specific consequences of the possibility that an alleged patent infringer acted in good faith infringe the principle of legal certainty. It decided that it did not as the court has jurisdiction (as stated in recital 9) to undertake a case-by-case basis analysis by examining, inter alia, whether the alleged patent infringer is a small or medium-sized enterprise operating only at local level and taking into account the language of the proceedings before the EPO and, during the transitional period, the translation submitted together with the request for unitary effect.
At the alleged lack of a guarantee that the machine translation system, and the uncertainty as to whether it will function properly. The Court, it must be observed that the EU legislature provided for a transitional period of 12 years for the introduction of the component of the language arrangements which involves machine translation of patent applications and specifications into all the official languages of the European Union. The Court added that there is no sufficient ground for the annulment of the contested regulation since no guarantee that that system, which is to be operational at the end of a transitional period, will function properly was given.

Concerning the infringement of the principle of the autonomy of EU law: the direct application of a regulation, laid down in the second paragraph of Article 288 TFEU, means that its entry into force and its application in favour of or against those subject to it are independent of any measure of reception into national law, unless the regulation in question leaves it to the Member States themselves to adopt the necessary legislative, regulatory, administrative and financial measures to ensure the effective application of the provisions of that regulation