Should Spain join the UPC, the country's patent attorneys would have a great deal to lose - UPDATED

Recently Italy indicated that, following the CJEU’s decision that the creation of the EU’s unitary patent and unified patent court (UPC) did not breach European law, it will be signing up to the system. Should this happen, it will leave Spain as the only EU member state well and truly on the outside.

The Spanish have been vocally opposed to the way in which the UPC has been set up for a number of years now and it was they and the Italians who initiated the legal action that ended up in front of the CJEU. Although the Spanish were defeated, it seems as if nothing much has changed, at least if an interview given to the Kluwer Law blog by the country’s employers’ organisation, the CEOE, is anything to go by.

In the interview, an unnamed CEOE representative made clear that he/she expects the Spanish government to maintain its current stand – not only because of the language issues that have been frequently highlighted, but also because of concerns about the way the EPO is run and, most importantly it seems, because the new regime will be extremely prejudicial to the interests of Spanish SMEs. “Only big companies will be able to litigate. If SMEs are sued for infringement, they will have to give up, even if the patent of the plaintiff is invalid,” the representative says. The CEOE, he/she continues, has listened carefully to the views of SMEs and that’s why it takes the position it does.

Now, all this may well be true; but I have to say it does not fit with the conversations that I have had in Spain, a country I have had cause to visit several times recently as we have begun preparing for IPBC Global 2016 in Barcelona. Instead, the feedback from IP people working inside both SMEs and larger companies in the country has been one of extreme frustration that their voices are not being heard and that, instead, the agenda regarding Spain’s relationship with the UPC is being set by Luis-Alfonso Durán, the managing partner of the firm Durán-Corretjer, who is president of CEOE’s intellectual property committee.

What has been pointed out to me is that EPO-related work is a major source of income for Spanish patent attorney firms. As things stand, any EPO patent grant in which Spain is a designated country has to be translated into Spanish. This is usually done by a registered Spanish patent attorney. According to Spain’s official college of industrial property agents, there are currently around 350 registered patent attorneys in the country, most of who - though by no means all - are in private practice.

And here’s the thing: there is a lot of translation work about. According to the latest statistics I could find (for 2012), a little under 20,000 EPO-granted patents required validation in Spain. That’s an awful lot for 350 attorneys to undertake and to charge for, even if they are only doing, say, 50% of the overall amount. To put it into context, last year there were 3,081 patent applications submitted from all sources to the Spanish patent office (a number that is down on the two previous years) and 2,485 applications filed from Spain to the EPO, representing a 2.1% drop on the 2013 figure. Were Spain to join the UPC, of course, the vast majority of the EPO-related validation and translation instructions that the country’s patent attorneys currently receive would no longer be necessary and so a significant revenue stream would dry up. This will affect some more than others, depending on the types of work they do (many in smaller firms and based outside the big cities, for example, are probably less well connected internationally and so get fewer briefs from non-Spanish clients), as well as their willingness and ability to get creative to generate replacement income. 

In the interview with Kluwer, the CEOE representative does make some important points about potential drawbacks with the UPC system that the Spanish government is perfectly entitled to be concerned about and other countries should be too. But the fact that the CEOE has such a strong anti-UPC position while the president of its IP committee is a private practice patent attorney whose firm might potentially lose out financially if Spain were to sign up is something that should be noted, even though it may be entirely coincidental.  Also of note is that 14 of the top 20 applicants for Spanish patents are universities and research institutions, which does rather beg the question as to how engaged Spanish businesses – especially smaller ones – are with patents in general, especially to the extent of worrying about the effects the UPC may have on them. It is not unknown in the world of IP for vested interests to dictate policy in the absence of well-informed or well-connected voices from other quarters. If anyone has any views on whether or not it is happening in Spain we would be happy to publish them. 

UPDATED - This blog was updated in order to revise the number of private practice Spanish patent attorneys currently practising in the country from approximately 70 to approximately 350.