Spain and Italy’s challenges to the Unitary Patent: From Spain’s initial action to the CJEU final judgment.

This post looks at the legal challenges that Spain and Italy brought against the Unitary patent and the EU legislation notably Regulation EU 1257/2012 and 1260/2012 which permitted its creation. On 5th May the Court of Justice of the European Union dismissed all actions against both regulations. So what were Italy and Spain’s pleas and the findings of the Court?



May 2011: Spain and Italy v Council of the European Union


I. In March 2011 the Council of the European Union issued a decision authorizing enhanced cooperation for the creation of a unitary patent protection. The enhanced co-operation mechanism is set out in the Lisbon Treaty and permits nine or more member states to use the EU’s processes and structures to make agreements that bind only those countries.


Spain and Italy applied before the Court of Justice of the European Union for the annulment of this decision on 30th and 31st May 2011 respectively.

They submitted four pleas:

  • Lack of competence of the Council to establish the enhanced cooperation
  • Misuse of powers
  • Breach of the condition that a decision authorising enhanced cooperation must be adopted as a last resort


II. The CJEU dismissed their actions on 16th April 2013 and found:

First, that the Council’s decision was within the boundaries of Article 118 TFEU as it is ‘[i]n the context of the establishment and functioning of the internal market’ that the first paragraph of Article 118 TFEU confers the competence to create European intellectual property rights and to set up, as regards those rights “centralised, Union-wide authorisation, coordination and supervision arrangements. (…) The competence, conferred by the second paragraph of Article 118 TFEU, to establish language arrangements for those rights is closely bound up with the introduction of the latter and of the centralised arrangements referred to in the first paragraph of that article. As a result, that competence too falls within the ambit of the functioning of the internal market.”

Second, that the decision to use the enhanced cooperation procedure had been taken as a last resort after multiple unsuccessful attempts and “having found that the unitary patent and its language arrangements could not be established by the Union as a whole within a reasonable period”. The Court also made clear that this cooperation contributes to the process of integration.

Finally, the Court rejected Spain and Italy’s argument about the Unitary Patent’s undermining the internal market through its uniform but non exhaustive protection, which applies in part only of the European Union. The Court in fact found that the creation of a framework only binding Members States who have cooperated is inherent to the procedure of enhanced cooperation.




May 2013: Spain v Council of the European Union


Following this judgment, Italy decided to sign the Unified Patent Court Agreement, whereas Spain filed in April 2013 actions against Regulation EU 1527/2012 on the creation of a Unitary Patent protection and Regulation EU 1260/2012 on translation arrangements which directly resulted from the use of the enhanced cooperation.


I. Spain’s claims (22nd March 2013):

 On 22nd March 2013, Spain lodged an application before the CJEU against the European Parliament and the Council of the European Union for two actions.  It asked:


First, to declare legally non-existent Regulation EU 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; in the alternative to annul Regulation EU 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection for lack of legal basis, and breach of the principle of autonomy and uniformity in the application of European Union law. Finally, if neither of these two options were chosen, to annul Article 9(1), Article 9(2), and Article 18(2), and all references in Regulation EU 1257/2012 to the Unified Patent Court as the judicial regime for the European patent with unitary effect and as the source of law for the EPUE.

The arguments put forward were the following (case 146/13):

  • Breach of the rule of law. Spain argued that the Regulation EU 1257/2012 was established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.
  • Regulation EU 1257/2012 does not introduce measures guaranteeing the uniform protection envisaged in Article 118 TFEU.
  • Use of enhanced cooperation for purposes other than those provided for in the Treaties.
  • Infringement of Article 291(2) TFEU and, in the alternative, misapplication of the Meroni case-law in the regulation of the system for setting renewal fees and for determining the ‘share of distribution’ of those fees.
  • Misapplication of the Meroni case-law in the delegation to the European Patent Office of certain administrative tasks relating to the European patent with unitary effect.
  • Breach of the principles of autonomy and uniformity in the application of European Union law, regarding the rules governing the entry into force of Regulation EU 1257/2012.


Second, to annul Regulation EU 1260/2012 implementing enhanced cooperation regarding translation arrangements for the Unitary Patent. Spain argues that the Regulation lacks legal basis and infringes the principles of non-discrimination, legal certainty, and autonomy.  Alternatively, Spain asked the CJEU to annul Articles 4, 5, 6(2), and 7(2) of Regulation EU 1260/2012 of 17 December 2012 implementing enhanced cooperation for the creation of unitary patent protection with regard to the applicable translation arrangements.

The arguments put forward regarding this second regulation were (case 147/13):

  • Infringement of the principle of non-discrimination due to a language arrangement prejudicial to individuals whose language is not one of the official languages (English, French and German) of the European Patent Office.
  • Lack of legal basis for Article 4.
  • Infringement of the principle of legal certainty.
  • Disregard of the Meroni case in the delegation of the administration of the compensation scheme (Article 5) and the publication of the translations (Article 6(2)) to the European Patent Office.
  • Infringement of the principle of the autonomy of European Union law due to the fact that the application of the Regulation relies on the entry into force of the Agreement on a Unified Patent Court. 



II. Advocate General Yves Bot’s Opinion (18th November 2014):

Opinion for case 146/13 can be found here.

Opinion for case 147/13 can be found here.

Press release can be found here.

 The Advocate General delivered his opinion on 18th November 2014 (see our post here). Yves Bot proposed that the Court of Justice of the European Union dismissed Spain’s challenge to Unitary Patent Regulations and argued that:

Regarding the creation of the Unitary Patent protection:

  • The Regulation EU 1257/2012  “only attributes to European patents an additional characteristic, namely the unitary protection, without affecting the procedure regulated by the Convention (on the grant of European Patent) The protection conferred is regulated by the uniform implementation provisions of the regulation. That protection brings real benefit in terms of uniformity and hence of integration compared with the situation resulting from the implementation of the rules laid down by the Convention”.
  • The EU Member States drafted the EU Regulation with the intention that the EU’s legislature would be shared with the Member States, enabling it to make references to national laws. The Unitary Patent will guarantee a uniform protection through national legislation applied to European Patent which will then be implemented “throughout the territory of the Member States participating in the enhanced cooperation.”

Regarding the renewal fees:

  • Yves Bot considers that the power to set the renewal level can only be exercised within a predetermined legislative framework “established and clarified by the EU legislature”.

Regarding Spain’s claim that the regulation provides for a specific judicial regime for the European Patent with Unitary Effect contained in the Agreement on a Unified Patent Court:

  • The Advocate General takes the view that the Court does not have jurisdiction to review the content of the Agreement on a Unified Patent Court in an action for annulment of the regulation.
  • The Agreement on a Unified Patent Court does not fall within any of the categories of acts the lawfulness of which is subject to judicial review by the European Court of Justice. In fact it is an intergovernmental agreement negotiated and signed only by certain Member States on the basis of international law and the Regulation EU 1257/2012 does not approve an international agreement but is intended to implement enhanced cooperation in the area of creation of unitary patent protection.

Regarding Spain’s claim that “the application of the regulation is absolutely dependent on the entry into force of the Agreement on a Unified Patent Court, and that the effectiveness of the power exercised by the European Union through the contested regulation thus depends on the will of the Member States which are party to the Agreement on a Unified Patent Court”:

  • The Advocate General highlights that it will be the role of the Unified Patent Court to ensure “the proper functioning of the European patent with unitary effect, consistency of case-law and hence legal certainty”. Regulation EU 1257/2012 is thus not at the mercy of willing Member States. 

Regarding Spain’s refusal to ratify the Unified Patent Court Agreement:

  • The Advocate General is keen to emphasize that it is an infringement of the principle of sincere cooperation.  By not ratifying the UPCA, Member States are “jeopardising the attainment of the Union’s harmonisation and uniform protection objectives
  • Yves Bot also notes that “the principle of sincere cooperation requires the participating Member States to take all appropriate measures to implement enhanced cooperation, including ratification of the Agreement on a Unified Patent Court, as such ratification is necessary for its implementation.”

 Regarding the language arrangements and the alleged breach of equality:

  • There is no principle of equality of language, therefore the choice of the English, French and German language “pursues a legitimate objective and is appropriate and proportionate”. Hence, if “the language arrangements chosen do certainly entail a curtailment of the use of languages, they pursue a legitimate objective of reducing translation costs.”
  • The purpose of having only three official languages derives from the fact that “the system introduced is aimed at ensuring unitary patent protection throughout the territory of the participating Member States whilst avoiding excessively high costs by establishing the language arrangements” thus allowing a reduction in translation costs.
  • Having only three languages acknowledges the realities of the patent sector, both in terms of research (“most scientific papers are published in German, English or French”) and economic reality (“those languages are spoken in the Member States from which most of the patent applications in the EU originate”). Moreover, it also “ensures a certain stability for economic operators and professionals in the patent sector”.

Regarding the principles of legal certainty and proportionality:

  • Finally the Advocate General looks at these two principles and concludes that neither of them is breached as the language requirements will in fact act as safeguards for legal certainty and a compensation scheme for translation cost will be created.


III. CJEU judgment (5th May 2015):

 The CJEU dismissed both cases on 05th May 2015. The Court 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 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 (European Platform of Universities engaged in Energy Research, Education and training).  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 rejected 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 the Advocate General, 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