Spain v Council of the European Union: The Advocate General’s opinion

Spain v Council of the European Union against the European Regulations implementing enhanced cooperation in the area of the creation of Unitary Patent protection:

The Advocate General’s opinion 

In 2011 Spain and Italy, in a first attempt to challenge the Unitary Patent, had sought annulment of the Council’s decision of March 2011 which authorised enhanced cooperation and therefore allowed the creation of the Unitary Patent package. Both countries submitted that Article 118 Treaty on the Functioning of the European Union did not provide the appropriate legal basis for the Council’s decision. The CJEU dismissed their actions in April 2013. Following this judgment, Italy decided to sign the Unified Patent Court Agreement, whereas Spain filed in May 2013 actions against Regulation (EU) N° 1527/2012 on the creation of a Unitary Patent protection and Regulation N° 1260/2012 on translation arrangements which directly resulted from the use of the enhanced cooperation.

Spain sought an order declaring “legally non-existent Regulation (EU) N°1257/2012 of the European Parliament and if the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and in the alternative, annul that regulation in its entirety.” In case this request was rejected, Spain also asked the court to annul “Article 9(1) in its entirety, and article 9(2) (…) article 18(2) in its entirety and all references in Regulation N°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 European Patent with Unitary Effect”.

Spain’s pleas were as follow:

Breach of the values of the rule of law in so far as a regulation has been established on the basis of a right granted by the European Patent Office, whose acts are not subject to judicial review.


Non-existence of an act of the European Union and, in the alternative, lack of a legal basis for Regulation N°1527/2012 in that it does not introduce measures guaranteeing the uniform protection envisaged in article 118TFEU.


Misuse of power through the 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 an uniformity in the application of the European Union law, as regards the rules governing the entry into force of Regulation N°1257/2012.

The Advocate General responded to Spain on 18 November 2014 and proposed that the Court of Justice of the European Union dismisses Spain’s challenge to Unitary Patent Regulations. Yves Bot argues that:

Regarding the creation of the Unitary Patent protection:

  • The EU Regulation 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.”

Concerning 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”.


As regard 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 EU Regulation 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”. EU Regulation 1257/2012 is thus not at the mercy of willing Member States.

 Concerning 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.”

Language arrangements and 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”.

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.

You can find the CJEU press release No 152/14 here

The full text of the opinion in C-146/13 is published here

The full text of the opinion in C-147/13 shall be published here