In early June 2011 Italy and Spain each launched legal challenges to the decision of the European Council to proceed with a unitary patent protection system throughout the European Union on the basis of the enhanced co-operation procedure rather than unanimity. When the European Council published its decision in March of this year, Spain and Italy were the only two states not to join the co-operation regime.

Italy has opposed the decision on a number of grounds, including:

• The EU has exclusive competence to create European intellectual property rights and according to EU law, the enhanced co-operation procedure can only be used in an area where the EU does not have exclusive competence
• The European Council did not give any reasons for its decision and did not give consideration as to whether this was a last resort as is required by EU law
• The decision adversely affected the internal market and did not reinforce the process of EU integration

Spain’s complaint is based on the following arguments:

• The decision was a misuse of power as it had been used to avoid negotiation with individual member states
• No dispute resolution system was put in place to deal with disputes arising from rights provided under the new system
• The necessary conditions for co-operation had not been met as it was not a last resort and it involved an area of exclusive jurisdiction, it resulted in a distortion of competition between member states, and did not respect the rights of Spain as a non-participant

At present the key features of the proposed unitary patent protection system are: 

• Optional European Patent granted by the European Patent Office
• Unitary effect given after grant of the patent, at the patentee’s request
• Renewal fees and registration dealt with by European Patent Office
• Introduction of a high quality machine translation system to reduce time and cost of translations
• Creation of a unified patent litigation system by way of an International Treaty between Member States as ratified by National Parliaments, to comprise a Court of First Instance with central and regional divisions, a Court of Appeal and a Registry

The Intellectual Property Unit of the Department of Jobs Enterprise and Innovation has indicated that Ireland is supportive of the use of the enhanced co-operation procedure for unitary patent protection, but they are still examining their position in relation to the challenges raised by Italy and Spain.

Until these challenges have been dealt with by the ECJ it is unlikely that any further steps can be taken towards the introduction of a unitary patent protection system.

Contributed by Carol Plunkett