Introduction to European Patents and European Patents with Unitary Effect

A patent is a property right wherein a set of exclusive rights are granted for a limited time.[1] Intellectual Property laws are generally domestic, thus, anyone who files a patent within their country is not protected across national boundaries. In order to resolve this issue and to protect their nationals, several international treaties have been adopted to protect inventors most notably: the Paris Convention, Patent Co-operation Treaty, Patent Law Treaty, and the European Patent Convention.

The first international attempt at a cohesive treaty for patent rights was in 1883 with the Paris Convention for the Protection of Industrial Property. It permitted national treatment and independence of patents for its signatories.[2] It also created a 12-month priority rule wherein the applicant has 12 months to file in any other signatory countries and allowed for a compulsory licensing scheme.[3] In 1970 the Patent Co-operation Treaty (“PCT”) was signed. It created a mechanism for international patent applications for signatories of the Paris Convention.[4] The PCT made it possible for an inventor to file a single international patent application instead of filing national applications in each country.[5] While granting patents remains under the control of each patent office regionally, this was the first attempt to streamline the process.[6]

However, the creation of the European Patent Convention (EPC) established the most comprehensive centralized system of obtaining patents in thirty-eight contracting states. The EPC is a multilateral treaty that provided the framework for the European Patent Organisation founded in 1977.[7] It provided an autonomous system for granting European patents. Initially, one could file a European patent, which would allow them to file for a patent domestically and for patents to be filed in numerous other jurisdictions simultaneously by filing at the European Patent Office.[8] When the bundles of patents are issued they are essentially national patents and must be enforced by each country. Under the Convention on the Grant of European Patents “The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State…”[9] Thus, the inventor will be granted domestic patents that will be treated exactly like other national patents.

An issue arises when different jurisdictions need to enforce the same patent. A recent case arose when a patent filed in the United Kingdom had a different outcome in a patent infringement case than in Germany.[10] As a result, under European Union law, another form of patent known as the European Patent with Unitary Effect (EPUE) was formed in order to foster “scientific and technological advances and the functioning of the internal market by making access to the patent system easier, less costly and legally secure.”[11] The unitary effect allowed for the possibility of “enhanced cooperation” among European Union Member States.[12] This served to overcome the issue of multiple litigation of the same patent by creating a single enforcement system next to national proceedings. With the exception of Poland−which has not signed the Agreement on a Unified Patent Court (UPCA)−Croatia, and Spain, 26 European Union (EU) member states and 10 EPO Member States have signed in co-operation with a view to create this unitary patent protection within their territories.[13]

Article 142 of the European Patents Convention (EPC) provides that “any group of Contracting States which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories may provide that a European patent may only be granted jointly in respect of all those States.”[14] Under “The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016,” the new European Patent with unitary effect scheme will grant unitary effects such as a single renewal fee, a single ownership, a single object of property, a single Court (the Unified Patent Court) and uniform protection.[15]

There are three legal instruments which put into effect the EPUE: “The Regulation on the Unitary Patent (UPR),” “The Regulation on the Translation Arrangements for the Unitary Patent (UPTR),” and “The Agreement on a Unified Patent Court” (UPCA).” The UPR and the EPC are two interlinked regulations. Pursuant to Article 142 (1) EPC European patents may only be granted in the Contracting States and in turn, Article 1(2) UPR stipulates that the Regulation constitutes a special agreement within the meaning of Article 142 EPC.[16] The UPR makes the unitary patent valid. It governs how the patent gets created, the validity and the effects. The UPR essentially allows the applicant to decide a month after publication of the European bundle patent to decide if they want to apply for unitary effect.[17] Under the second instrument, the UPTR, the patent must be filed in one of the official languages of the EPR (English, French or German) or a translation in one of those languages must be filed.[18] Lastly, under the UPCA, the Unified Patent Court is established as a common Court for Member States to confer for competence for actions of infringement for the unitary patents.[19] Additionally Article 35 allows the option for arbitration of any patent conflicts. Whether the arbitration will be used comes into question since the arbitrator cannot make any decision as to the validity of the patents.[20]

Conflict with Spain Case C-146/13

Spain brought an action against the European Parliament and Council of the European Union to declare the contested regulation regarding the EPUE and asked the Court to annul or declare the contested regulations legally non-existent.[21] Specifically in the first case, Spain’s main issues surrounded the implementation of the unitary patent itself. Since each country is meant to implement the patents as national law and not EU law, Spain made the argument that there is no harmonisation. Based on the following grounds Spain’s claims were rejected in whole.

Spain’s first and main issue was that in light of European Union law, the administrative procedure preceding the grant of the European patent is not subject to review.[22] Spain claimed that the regulations are protected under European Union law and that there is no method of regulation to check for uniformity in incorporation.[23] The regulation implemented enhanced cooperation under the unitary patent protection and does in fact incorporate a procedure for granting European patents.[24] The Court rejected Spain’s claim by stating that when a European Patent is granted under the European Patent Office, the EPC may benefit from unitary effect.[25]

The second claim which Spain submitted was that article 118 of the Treaty on the Functioning of the European Union (TFEU). Although the TFEU provides “uniform protection of intellectual property rights throughout the Union and for the setting up of centralised Union-wide authorisation, coordination, and supervision arrangements.” [26] The European Council has the right to establish measures and provide uniform protection of intellectual property rights and set up centralised union-wide authorisation.[27] The Court found that according to the TFEU the Member States may adopt measures under their national law to implement the unitary patent and prevent any third party from committing acts against which that patent provides.[28]

In their third claim Spain contended that the enhanced cooperation in the treaties is a misuse of power for purposes other than those provided in the treaty. The standard of evidence to determine misuse of power is “only if it appears, on the basis of objective, relevant and consistent evidence, to have been taken solely, or at the very least chiefly, for ends other than those for which the power in question was conferred or with the aim of evading a procedure specifically prescribed by the FEU treaty….”[29] Spain failed to present evidence that the contested regulation was adopted for any aim other than those which it achieves. The Court stated that Spain simply repeated its early assertions that the contested regulation fails to establish a judicial system capable of providing uniform protection and on that basis the Court rejected this claim.[30]

The fourth and fifth claims regard the misuse of power and misapplication of the Meroni case law.[31] The Court found that there was no violation of the Meroni doctrine since there is objective justification for the delegation.[32] In the fifth plea Spain argued that Article 291 TFEU “does not allow the legislature to delegate that power to the participating Member States.”[33] The Court found that there are special agreements and under the EPC Articles 143 and 145, the Contracting States may grant additional tasks and the EPO is meant to ensure the governance and supervision of the activities relating to the EPUEs.[34] Furthermore, Spain argued that the uniform conditions are needed for the purposes of implementing Article 9(2).[35] The Court balked at this assertion and ruled that this was a sufficiently implemented fee collecting system by the Member States, and there was no need for an enactment by the Commission under Article 291(2) TFEU.[36] The Court brazenly stated that Spain’s assertions were completely wrong and 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 EPO.”[37] The Court outright rejected the fourth and fifth pleas.

The sixth and seventh pleas by Spain regarded the infringement of the principles of autonomy and uniformity of the EU law. The sixth plea is broken in three parts, but essentially Spain contended that the Unified Patent Court does not form a part of the judicial system of the European Union and that the UPC Agreement does not lay down any guarantees to preserve EU law. Article 89 of the UPC does not enter into force that the effectiveness and competence exercised by the European Union.[38] The Court found that the sixth plea must be rejected as inadmissible since the Courts of the European Union have jurisdiction to rule on the lawfulness of a measure adopted by a national authority.[39]

Spain submitted that under Article 18(2), the Member States are allowed to unilaterally decide if the regulation applies to them. This means the Member States do not have to ratify the UPC Agreement. Therefore, the UPC would not have exclusive jurisdiction over the territory so there would be no unitary effect.[40] The Court found that Spain’s entire plea was based on a false premise because of the provisions from Article 3(1) and Article 3(2) of the contested regulation to the exclusion of all other provision of that regulation.[41] The Court found that a partial and “temporary derogation” of that kind is justified and dismissed the claims brought by Spain in their entirety.[42]

Conflict with Spain Case C-147/13

Spain’s second suit’s main grievance was that the official languages of the EPO—which the European Patent must be filed or translated in—are English, French, or German. Language has nothing to do with how a patent should be treated. Once again Spain raised several pleas of law on the ground of language, infringement of Meroni, lack of legal basis and infringement of the principle of legal certainty, and infringement of the principle of the autonomy of EU law.

The first and primary issue is that the language preferences showed discrimination. The Court outright rejected this as the rules for legitimate preference in treatment is established from the judgment in Italy v. Commission, C-566/10 P, EU:C:2012:752, paragraph 93. In this case the Court stated that under the principle of proportionality, if it is appropriate for attaining an objective pursuit, there may be a difference as long as it does not go beyond what is necessary to achieve the objective.[43] The Court found that these arrangements are appropriate to achieve the legitimate objective.

The second issue was for the violation of the Meroni doctrine. The Court found that it is not a violation to have an administration of the compensation scheme delegated. It is not a violation to have the publication of translations delegated to the EPO, empowering these administrative tasks is intrinsic to implementing the goal of the unitary patent protection regime.[44] Thus, the Council did not delegate powers to either the Member States or to the EPO uniquely under EU law and there is no violation.[45]

The third claim brought before the Court was for a lack of legal basis under Article 4 because of the regulation of translations. The Court found that where there is a language arrangement—or when European intellectual property rights are being determined—Article 118 of the TFEU could serve as the legal basis for Article 4 since it is not precluded.[46] The TFEU also imposes no requirements on the council to approximate all aspects of the language arrangements and therefore this article cannot serve as a legal basis for contesting Article 4 and this plea must be rejected.[47]

The fourth infringement claimed by Spain was over the principal of legal certainty. Spain contested that the regulation limits access to information since the EPUE are published only in the language of the proceedings and exclude other official languages.[48] Based on six points written at length in the opinion the Court rejected Spain’s concerns over a breach of the legal certainty principle. The Court struck down Spain’s claim for several reasons; however, most convincingly in paragraph 85, the Court acknowledged the patent in its original language produces legal effects not the translation therefore the entire argument made by Spain is irrelevant.[49]

Lastly, Spain raised the issue of “infringement of the principle of the autonomy of EU law” based on the requirement for the application of the regulation dependent on the entry into force of the Agreement on a Unified Patent Court. The Court found that EU legislature left it to the Member States to adopt a number of measures and legal framework including the establishment of the UPC. This is essential in order to ensure the proper functioning of the patent.[50] The Court therefore found that this plea must be rejected.


Spain and Italy brought claims in 2013 rejecting the unitary patent. What seemed most important for both countries was the issue of language arrangements and that the enhanced cooperation should not go forward without the agreement of two member states of the union.[51] The Court held to Spain and Italy’s argument to be unfounded and that protection conferred by the unitary patent would be advantageous in terms of uniformity.[52] Spain and Italy have not proposed any viable argument as to why the European Patent should not have unitary protection.

Although Italy failed to join Spain in both suits, it is clear that the Court had no intentions of overturning the new EPUE. These claims brought by Spain seem to be more politically motivated after feeling insulted that Spanish was not written as one of the official languages rather than having any legal merit. The EPUE is an important stepping-stone for intellectual property rights and will foster greater scientific cooperation and enhanced cooperation between European countries. These decisions by the European Court of Justice supporting the EPUE and clarifying the legality of the legislations show that intellectual property rights are becoming more cooperative and international.

[1]See The European Patent Convention, EPO, 1973.

[2]See Paris Convention for the Protection of Industrial Property, WIPO, 1979, art. 2.

[3] Masaaki Kotabe, Evolving Intellectual Property Protection in the World: Promises and Limitations, 1 U. Puerto Rico Bus. L.J. 1, 12 (2010).

[4] WIPO, Protecting your Inventions Abroad: Frequently Asked Questions About the Patent Cooperation Treaty (PCT), (April 2015),

[5] Id.

[6] Id.

[7] EPO, Unitary Patent, (last visited Mar. 18, 2016)

[8] Id.

[9] The European Patent Convention, EPO, 1973, art. 2.

[10] See generally, Wherein the Court found the same European patent is litigated in different countries (as opposed to other factors, such as different evidence, different procedures and the fact that even within one country Courts often disagree with each other on questions of patent interpretation) are much debated. Actavis Group hf v Eli Lilly & Co, 2012 WL 5894516.

[11] Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶11.

[12]Bardehle Pagenberg, Unitary Patent and Unified Patent Court, (Aug 2015),

[13] Id.

[14] The European Patent Convention, EPO, 1973, art. 142.

[15] See Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016.

[16] Id.

[17] Bardehle Pagenberg, Unitary Patent and Unified Patent Court, (Aug 2015),

[18] Regulation (EU) No 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 (OJEU L 361, 31.12.2012, p. 2) including any subsequent amendments.

[19] 2013/C 175/01 Agreement on a Unified Patent Court (OJEU C175, 20.06.2013, p.3)

[20] 2013/C 175/01 Agreement on a Unified Patent Court (OJEU C175, 20.06.2013, p.42)

[21] Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶21.

[22] Press Release, Court of Justice of the European Union, The Court has dismissed the actions brought by Spain and Italy against the Council’s decision authorizing enhanced cooperation in the area of the single European patent, Press Release No 47/13 (April 16, 2013).

[23] Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶24.

[24] Summary of Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶2.

[25] Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶31.

[26] Summary of Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶2.

[27] Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶42.

[28] Id at ¶51.

[29] Id at ¶56.

[30] Id at ¶58-59.

[31] Anthony Arnull & Damian Chalmers, The Oxford Handbook of European Union Law, 339 (Oxford University Press)(1st ed. 2015).

[32] Judgment in Spain v Parliament and Council, ECJ: C-146/13, ¶63.

[33] Id at ¶61.

[34] See Id at ¶72.

[35] Id at ¶81.

[36] Id at ¶84.

[37] Id at ¶87.

[38] See Id at ¶92.

[39] Id at ¶101.

[40] Id at ¶93.

[41] Id at ¶106.

[42] Id at ¶107.

[43] Judgment in Spain v Parliament and Council, ECJ: C-147/13, ¶33.

[44] Id.

[45] Id at ¶63.

[46]Id at ¶72.

[47] Id at ¶74

[48] Id at ¶76.

[49] Id at ¶86.

[50] Id at ¶94.

[51] Council Decision 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection (OJ 2011 L 76, p. 53).

[52] Press Release, Court of Justice of the European Union, The Court has dismissed the actions brought by Spain and Italy against the Council’s decision authorizing enhanced cooperation in the area of the single European patent, Press Release No 47/13 (April 16, 2013).

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