A guide to the UPC and the UP - Flipbook - Page 115
7-13
However, some obstacles stood in the way of the Unitary Patent Regulation’s development:
In 2011, Spain 17 and Italy 18 each filed a nullity action 19 before the CJEU against the Council’s
decision to allow enhanced cooperation. 20 They contested the decision on five grounds. 21
The CJEU dismissed both of the joined actions on all grounds. 22 A couple of years later,
in 2013, Spain 23 brought another nullity action before the CJEU. This time it was directed
against the Unitary Patent Regulation itself. Spain relied on seven arguments including,
in short, infringement of the values of the rule of law, lack of a legal basis for the Regulation,
illegitimate delegation of tasks and the dependence of the Unitary Patent Regulation on the
UPCA. Again, the CJEU dismissed the action on all grounds in its decision of 5 May 2015,
finally clearing the way for the Unitary patent. 24 Specifically, the CJEU held:
“Indeed, unlike the European patents granted in accordance with the rules laid down by the EPC
which provide, in each of the States which are party to that convention, protection the extent of
which is defined by the national law of each State, the uniformity of the protection conferred by
the [European patent with unitary effect] stems from the application of Article 5(3) and Article 7
of the contested [Unitary Patent] Regulation, which guarantee that the designated national law
will be applied in the territory of all the participating Member States 25 in which that patent has
unitary effect.” 26
Former Articles 6 to 8
7-14
17
18
19
20
21
22
23
24
25
26
27
Originally, the Unitary Patent Regulation contained provisions regarding substantive patent law
on infringement in arts 6 to 8. 27 The former art.6 concerned direct infringement of the Unitary
patent, art.7 defined indirect infringement, and art.8 related to the limits of the effects of the
Unitary patent.
Action brought on 3 June 2011, Kingdom of Spain v Council of the European Union (C-274/11) OJ No. C 219, 23.7.2011, p.12.
Action brought on 10 June 2011, Italian Republic v Council of the European Union (C-295/11) OJ No. C 232, 6.8.2011, p.23.
art.263 TFEU.
See Council decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of Unitary patent
protection (2011/167/EU) OJ No. L 76, 22.3.2011, p.53.
The pleas were: (1) Council’s lack of competence to establish the enhanced cooperation; (2) misuse of powers; (3) breach of
the condition that the decision authorising enhanced cooperation must be adopted as a last resort; (4) infringements of arts
20(1) and 118 TEU and art 326 and 327 TFEU; and (5) disregard for the judicial system of the Union.
Kingdom of Spain and Italian Republic v Council of the European Union (joined cases C-274/11 and C-295/11) ECLI:EU:C:2013:240,
[10] to [94].
Action brought on 22 March 2013, Kingdom of Spain v European Parliament and Council of the European Union (C-146/13) OJ No.
C 171, 15.6.2013, p.15.
Kingdom of Spain v European Parliament and Council of the European Union (C-146/13) ECLI:EU:C:2015:298.
The Unitary Patent Regulation refers to “participating Member States” whereas the UPCA refers to Contracting Member
States. In practice, they are one and the same since art.18(2) Unitary Patent Regulation provides that a Unitary patent only
has effect in those Member States where the Court has exclusive jurisdiction.
C-146/13, at [47].
Council of the European Union, 23 June 2011, Document 11328/11.
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A Guide to the UPC and the UP 105
