Wednesday, February 10, 2016 Spain: Just English or either include Spanish

American films in Spain

 In an interview in World IP Review Ms. Garcia-Escudero the head of the Spanish patent office (OEPM) looks back on the negotiations for the unitary patent system:

“During the negotiations, one of our proposals was either to include the Spanish language or to have just one official language: English. They didn’t approve either offer, so we stayed out.”

The unitary patent favors the official languages of the EPO: English, German and French. Since the unitary patent is linked to the existing European patent, the unitary patent uses the same official languages. Spain, and also Italy, do not agree with this.

There may be some problems with the offers suggested by Spain. The EU cannot change the official languages of the EPO, since the European Patent Convention (EPC) is not an EU regulation but an international agreement. In fact some members of the EPC are not EU members. Changing the EPC, although possible, is a lengthy undertaking.

Realistically, one could at best desire that if a unitary patent is granted by EPO in a language different from English, then the proprietor should provide an English translation. However, a requirement like this has been adopted in the unitary patent. A request for unitary effect must include a full translation of the specification of the European patent into English if the language of the proceedings is French or German (Article 6(1)(a), Council regulation 1260/2012). Admittedly, this is only required during a transitional period (up to 12 years). To make things fair, you also have to submit a translation if the language of the proceedings was English, but in this case you can pick any official EU language you like.


After negotiations within the EU broke down, the EU used the--rarely used--possibility of 'enhanced cooperation' (Article 20 of the European Union Treaty). 'Enhanced' cooperation allows some member states to be excluded from the cooperation. In this case Spain and Italy who remained opposed to the new unitary patent were excluded. Italy has later rejoined the unitary patent system (while stressing that it remained opposed to the language regime).

Spain and (in part) Italy have complained about this with the  EU Court of Justice. The court agreed that the Spanish language was treated differently, but that this was allowable if it this was needed to get a cost efficient system.

The absence of Spain from the unitary patent will force us to “reflect on the importance of the Spanish language and technology”, according to Garcia-Escudero. The absence of Spain, the fifth EU economy by GDP, is indeed regrettable and will make the unitary patent a bit less attractive. In any case it will force a proprietor of a unitary patent to reflect if it wants to additionally validate the corresponding European patent in Spain (this is allowed).

Italy has since decided that a strong patent that is valid European wide is too important, and has decided to join the unitary patent system after all even though it is not happy with the languages. Hopefully, Spain will do the same someday.

Photo "American films in Spain" by Brian Snelson via Flickr under CC-BY 2.0 license

Wednesday, May 06, 2015 CJEU rejects Spains objections against unitary patent and unified patent court

The Court of Justice of the European Union has issued its decisions on Spain's legal challenges against the unitary patent. The two decisions can be found here C-146/13 and here C-147/13.

The decisions of the court do not come as a total surprise since the same court denied earlier challenges by Spain and Italy. Moreover, the advocate general had already opined to deny the objections.


One of the important objections is that the Spanish language is discriminated against. The official languages of the EPO are English, German, and French. An inventor who does not master one of these languages clearly is at a disadvantage. The advocate general had acknowledged this point in its opinion.

The court is careful to avoid the word 'discriminate' but acknowledges a 'difference in treatment on the grounds of language'. Nevertheless, the court rules that this different treatment is appropriate to serve the goal of cost reduction.

Recitals 4 and 5 of the contested regulation add that, in accordance with the decision on enhanced cooperation, the translation arrangements for European patents with unitary effect should be simple and cost-effective. They should moreover ensure legal certainty, stimulate innovation and benefit, in particular, small and medium-sized enterprises, so as to make access to the EPUE and to the patent system as a whole easier, less costly and legally secure. It follows from the above that the aim of the contested regulation is to facilitate access to patent protection, particularly for small and medium-sized enterprises.

The legitimacy of such an objective cannot be denied. One of the choices facing an inventor when planning to obtain protection for his invention by the grant of a patent concerns the territorial scope of the desired protection, which will be decided after an overall assessment of the advantages and drawbacks of each option, which includes complex economic evaluations of the commercial interest of having protection in the various States compared with the sum of the costs entailed in obtaining the grant of a patent in those States, including translation costs

 
Most of the other objections question whether the European Union has the power to the implement the unitary patent, especially given the rather convoluted legal construction that was used. The EU has issued two directive which only enter into force if a unified patent court is set up (which is not an EU institute) so that a patent issued by the EPO (also not an EU institute) would be valid throughout the EU (except that is doesn't--at least Spain is not in). It is a valid concern if this construction passes mustard.

Also the objections of this nature are rejected. For example, the court notes that

Neither does the creation of the Unified Patent Court undermine any competence of the European Union. First of all, the power to create a unified patent court and to determine the scope of its powers continues to fall to the Member States and has not been entrusted exclusively to the European Union. Next, the contested regulation expressly requires Member States to grant the Unified Patent Court exclusive jurisdiction.

This is the second time Spain has tried to invalidate the unitary patent through the Court of Justice: the first time was together with Italy. This second time it was alone, as Italy appears to have warmed a bit towards the unitary patent. In fact, as we blogged earlier, Italy may even join the system.

At the moment no further legal objections are pending with the court of justice. The unitary system continues to be postponed until the sufficient ratifications are in. Currently 6 out of 13 required have ratified, with the Netherlands recently announcing it started the ratification process. 

Monday, March 09, 2015 English translations published of opinions in Spain's challenge against Unitary patent

At present Spain has two legal challenges against the unitary patent system pending with the Court of Justice (Cases C-147/13 and C-146/13). We reported earlier that the Advocate General published its opinion in these two cases. (Also discussed here.)

Both opinions of the Advocate-General were available in 22 different languages but not in English. This has now been rectified and an English translation is now available, via the links provided above.

Wednesday, November 19, 2014 Opinions in legal challenges against the unitary patent available

The Advocate General has delivered opinions in Spain's two pending legal challenges against the unitary patent. 

The unitary patent is built on three main pillars: An agreement that creates a new judiciary to decide on infringement and validity for the whole of the EU. This agreement was agreed outside the EU, i.e., it is not an EU regulation.  Next there are changes in the regulations to the European Patent Convention so that the European Patent Office will grant unitary patents. Finally, there are two EU regulations that ensure that unitary patents have the same scope and effect in all EU member state.

This case is targeted against the last pillar. Spain wants to have these last two regulations, regulations 1257/2012 and 1260/2012, invalidated.

When a state brings a case to have a regulation invalidated, an Advocate General presents his opinion on the matter before the judges give their ruling. The Advocate General's opinion is not binding on the court. In both these cases judgment will be passed later. Often, though not always, the opinion of the Advocate General is followed though.  The opinions can be found here:  C-146/13 for regulation 1257/2012, and  C147-13 for regulation 1260/2012. A large number of translations are provided of these French texts, however at present I do not find an English translation.

Spain has offered 7 and 5 reasons respectively as to why the two regulations should be invalidated. In its two opinions the Advocate General considers each reason in turn and concludes that none of them are decisive. Most of the complaints seem rather formal in nature; arguing that the EU did not have the authority to make this regulation or that the regulation violates EU law. The arguments against 1260/2012 include the complaint that Spain is discriminated against on the basis of their language.

According to Spain, by endorsing the EPO patent system, the EU favors the official languages of the EPO, i.e. English, German and French. Anyone who has a different native language, say Spanish, is at a disadvantage when trying to obtain patent protection.

The Attorney General agrees with this point:

39.      Il ne fait aucun doute ici que les personnes qui ne connaissent pas les langues officielles de l’OEB sont discriminées et qu’un traitement différencié a ainsi été opéré par le législateur de l’Union.

Which I translate as:

There is no doubt here that people who do not know the official languages of the EPO are discriminated against and that the legislature of the Union has thus treated them differently.

Nevertheless, this should not lead to invalidation. The Attorney General notes that there is no absolute right using your own language in all circumstances. Furthermore, given the goal of reducing the costs of acquiring EU wide patent protection at low costs, the EU had no choice but to reduce the number of languages. In any case, according to the Attorney General, there can be no doubt that all researchers understand German, English, and French since the majority of scientific publications are in this language any way.


So, as far as the Attorney General is concerned there is no need to invalidate either one of these two regulations, so that the unitary patent can remain on track. Judgment is expected in 2015.

Monday, June 03, 2013 Spain's arguments against unitary patent published

Last Friday the pleas were published that Spain raised in the annulment actions C-146/13 and C-147/13 aimed at the EU regulations for the Unitary Patent.

Thursday, May 02, 2013 Can Spain or Italy change their mind, and join the Unitary patent?

At the moment, unitary patents will not be valid for Spain and Italy. Could these countries still change their minds?

Friday, April 26, 2013 The difference between Spain and Italy in the Unitary patent

Both Spain and Italy have a special position in the unitary patent. Spain is not a party to any of it, but Italy is in the middle.