When it comes to the language of proceedings, the Unified Patent Court (UPC) offers a flexible regime. For actions filed at the Local and Regional Divisions, proceedings may use the relevant national language. In addition, the Local or Regional Division may choose to designate one or more official EPO languages (English, French and German).
The UPC has issued a news briefing confirming that the French, German and Italian Local Divisions will hear cases in English as well as in their respective national languages. In announcing that English will be available as a language of proceedings, the French, German and Italian Local Divisions have followed in the footsteps of the other Local and Regional Divisions, which already designate English.
Businesses and institutions from all over the world will want to be able to work in English, which is also the language of the vast majority of European patents. The news that English will be available at all of the Local and Regional Divisions will give the parties confidence in the new court and certainty that English-speaking parties will not be disadvantaged at the UPC.
As a quick recap, the language of proceedings will depend on where a UPC action is launched, and so the party’s preferred language will play a role when it comes to selecting a venue for a UPC action.
For infringement actions, the general rule is that these will be heard by the Local or Regional Division covering the territory where infringement (actual or threatened) occurred, or where a defendant is resident. The new development means that patentees should have the option to have an infringement case heard in English at all of the Local and Regional Divisions, which may simplify translation requirements during the proceedings and reduce costs. The patentee and the defendant can also agree to use the language of the patent, subject to the Local Division’s approval.
There are several circumstances under which an infringement action can be brought at the Central Division of the UPC, which will use the language of the patent as the language of the proceedings. For example, the Central Division will hear infringement actions for defendants residing outside the EU. Additionally, if a patentee can identify infringement (or a threat of it) in a country that does not have a Local or Regional Division (at the moment, this is Malta, Bulgaria or Luxembourg), then an action can be brought at the Central Division.
Revocation actions that are filed first (i.e. not as a counterclaim to an infringement action) and applications for a declaration of non-infringement will be dealt with by the Central Division. If the defendant files an infringement counterclaim, there is an option for the infringement counterclaim to be heard at the Central Division in the language of the patent or at a relevant Local or Regional Division. A revocation counterclaim to an infringement action may be dealt with by the Local or Regional Division handling the infringement proceedings and will use the same language. Alternatively, the revocation counterclaim may be referred to the Central Division (on its own or together with the infringement claim) in which case the language of the patent will apply.
In practice, as the majority of European patents are in English, we expect that a large majority of the cases at the Central Division will be heard in English.
As the UPC gains momentum, we are expecting to see many revocation actions (freestanding or as a counterclaim to infringement proceedings) as parties will be seeking to deal a single knock-out blow across the participating states. Revocation actions are likely to be similar to EPO oppositions with which users of the EPO system are already very familiar and which are a popular option for parties looking to clear the way. Revocation actions have the advantage that they can be brought at any time, rather than within a nine-month period following grant as is the case for EPO oppositions, and against patents that have already survived the opposition procedure at the EPO. This widens the window of opportunity for parties to deal with freedom to operate issues in the participating states in a single forum. The UPC of course also provides an attractive forum for enforcing a patent across multiple states in a single action.
We welcome the news that all of the Local and Regional Divisions will hear cases in English which provides additional certainty for users and will make the UPC a more attractive forum for businesses and institutions from all over the world.
With its extensive experience of EPO oppositions and pan-European litigation, our team is looking forward to representing our clients at the various divisions of the UPC.
