The vast majority of the patents granted by the EPO are in English, yet at present half the infringement proceedings at the UPC are in German. (By contrast, about 10% of the patents granted by the EPO are in German.) However, a party can request that the language of proceedings be changed to the language of the patent under Article 49(5) UPCA, and on Wednesday 17^th April 2024 the UPC Court of Appeal issued its first decision on a request under this provision.

In its decision (official English translation) the Court found in favour of changing the language of proceedings from German to English and provided guidance on what constitutes fairness, what circumstances are relevant under Article 49(5) UPCA, and in what way the position of the defendant is relevant. The extensive discussion of relevant circumstances will be useful for plaintiffs choosing the language in which to file, should they wish to avoid similar change of language requests on their case. Carpmaels represented the defendant in this action, and this article will concentrate on the legal principles set out by the Court rather than the facts of the case. For those who want more background, our previous article provides detail on the language options at the UPC.

The guidance from the Court of Appeal

Article 49(5) UPCA reads as follows:

“49(5) At the request of one of the parties and after having heard the other parties and the competent panel, the President of the Court of First Instance may, on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant, decide on the use of the language in which the patent was granted as language of proceedings. In this case the President of the Court of First Instance shall assess the need for specific translation and interpretation arrangements.”

The Court of Appeal listed circumstances that could be considered relevant or not depending on each specific case as outlined below:

Circumstances that could be considered relevant:

• Language most commonly used in the field of technology and in particular the language of the evidence – including of the prior art
• The nationality or domicile of a party: a party must be able to fully understand what is said on its behalf by a representative and the other party
• Translations are time-consuming and costly
• The size of the parties relative to each other and whether they can organise their defences in an unfamiliar language with the same sort of resources
• The language of the patent is the language of any EPO proceedings and UPC revocation actions, so it has legal consequences, and the right holder should expect to have to conduct proceedings in that language, whether they filed the application or later acquired the case. Therefore, unless there are special significant circumstances pointing in a different direction, using the language of the patent is not unfair to the plaintiff

Circumstances that could be considered irrelevant:

• The fact that a representative speaks the language of the proceedings does not solve the issues resulting from the fact that the language of the proceedings is not the language of the party
• A change of language can result in a delay which is usually detrimental to the plaintiff. However, in this specific case there was an additional burden on the defendant rather than an impact on the plaintiff­­ arising from the strict time limits in preliminary injunction proceedings
• Prevalence of speakers in the EU of the current language of proceedings (said to be 20% native and 10% non-native speakers for German)
• Nationality of the judges at first instance. The Court noted that if a party suspects that some of the judges on the panel will not understand the nuances of the case, they are free to file translations of their submissions and organise simultaneous translation at the hearing

The decision also explained that if, when balancing the interests, the parties are found to be in a similar situation (the President had found that parties were “equally inconvenienced” on the basis that both parties were US companies), then the position of the defendant is decisive. This is one of the rare occasions of obiter dictum in a UPC decision. Indeed, when the Court of Appeal applied its ruling to the facts, it held that the parties’ interests were not of the same weight.

The Court of Appeal justified its conclusion based on the language of Article 49(5) UPCA itself which specifically mentions the “position of the defendant”. In addition, the Court also turned to other paragraphs of this same article, thereby giving the context in which this specific provision arises.

• Articles 49(1) and (2) UPCA give the plaintiff the choice of where to file its action, and thus the choice of a division where certain languages are available (including English). It may also decide when to file an action, and hence has time to prepare its statement of claim in its chosen language when the defendant must follow a strict schedule of deadlines for its defence.
• The importance of the choice of the language of the patent is emphasised by Article 49(6) UPCA according to which the language of proceedings at the central division is the language of the patent, and by Article 49(3) UPCA according to which the parties can agree on the use of the language of the patent as this could be relevant in infringement actions when construing the claims.

The Court of Appeal underlined that the President of the Court of First Instance has a margin of discretion when assessing fairness and therefore review of any decision on appeal is limited. The decision is made on a case-by-case basis as it should take “into account all relevant circumstances”, which should be related to the specific case and the position of the parties.

Convenience for the first instance judges

Convenience is not mentioned in the subparagraphs of Article 49 UPCA that the Court considered, although it is mentioned in Article 49(4) UPCA, which deals with the situation where the parties agree on change of language (and was also mentioned in the hearing). The Court of Appeal did however seek to minimise the inconvenience to the first instance judges of its decision to change the language of proceedings from the language in which they had already heard the case. The Court allowed that the decision of the first instance judges could be issued in German with a certified translation into English. This is a practical solution that avoids any interruption of the judges’ work in the underlying procedure, despite the fact that the ground of convenience is not mentioned in article 49(5) UPCA, the provision being applied in the present case.

Conclusion

This decision will no doubt have a strong impact on the choice of language by plaintiffs in proceedings they initiate, should they wish to avoid the distraction of having such change of language requests being made and heard. The Court of Appeal’s guidance should help plaintiffs assess whether there are relevant circumstances for such a request in their matter.