Still No European Patent As Spain, Italy Contest ECJ Decision On Unitary Patent Protection

Efforts to create a single patent valid across all of Europe are nothing new, yet patent protection is presently only available by validating a patent granted by the European Patent Office (EPO) in each individual member country. Proposals to change this have been gathering steam, but court cases brought by two different countries may threaten any recent momentum.

Italy and Spain applied to the European Court of Justice (ECJ) to rescind a March 2011 decision that would make it easier to create a single mechanism for granting unitary patent protection by specifically authorizing enhanced cooperation among EU member countries. The ECJ decision, known as Council Decision 2011/167/EU, is notable for its approach to further prospects for this purpose. The Council Decision follows provisions under the EU’s Lisbon Treaty that provide for “enhanced cooperation” as a workaround to a failure to reach consensus during member state negotiations. The Council Decision results from frustration of certain EU member states at not being able to reach unanimity regarding EU-wide patent protection and reflects their desire to establish rules between themselves on the basis of existing proposals they support.

Recent attempts to make headway on the unitary patent protection issue were derailed by a lack of agreement on language and translation arrangements. Previous negotiations aimed to have patent procedures conducted in one of three languages (French, German, and English), which would considerably reduce the costs of obtaining patent protection in Europe. This, however, excludes all other languages among the EU member countries. Several countries objected, concluding that it would be give German and French competitors competitive advantages.

Spain and Italy brought their ECJ actions to object to the Council Decision as unlawful and likely to distort competition within the European Union. Both countries asserted that the conditions for invoking the Lisbon Treaty’s “enhanced cooperation” provisions were not fully met. Spain further argued that the Council Decision was merely a mechanism to avoid negotiating with member states instead of promoting integration of all member states, and therefore a misuse of powers. Deadlines for observations to the ECJ on the issues presented will pass in September, after which the ECJ will conduct hearings on the two cases.

Officials have long sought to implement unified mechanisms that make it easier to both obtain patent protection and enforce patent rights in multiple countries. Among the many suggested benefits of such proposals are reductions in costs to patent applicants. Present law allows applicants to pursue patent protection either in each country individually or through a validation procedure at the EPO. Applicants using the EPO must still ultimately register their validations in each country. Regardless of which of those two options are chosen, patent applicants must pay registration fees in each desired country, and often must pay for translations of patents into local languages.

A separate framework for an EU-wide dispute mechanism for enforcement of patent rights also presents problems, since patent rights holders must initiate and prosecute infringement actions in each country where a patent is registered. The result is an uneven approach that requires court cases in each country – and which is subject to local procedural rules and the potential for inconsistent decisions across multiple jurisdictions.

The cases filed by Italy and Spain highlight that obstacles remain to any significant progress towards unitary patent protection. The ECJ’s attempt to circumvent the language and translation concerns of some countries will likely further crystallize member state positions, rather than lead to any real consensus on the issues. Instead, the ECJ cases may only serve to further frustrate patent applicants hopeful for improvements that make it easier to patent their inventions in Europe.



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