On 5th 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.
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