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Such is the importance of language in any form of communication – and law is no exception. The importance is particularly acute for an international court like the newly opened UPC, which facilitates patent litigation covering (at the time of writing) 17 jurisdictions with multiple languages between them.
On the tip of my tongue: determining the language of proceedings
UPC proceedings are heard in one language, which must be chosen according to provisions in the Agreement on a UPC and the Rules of Procedure (UPCA and RoP). Briefly, each UPC Division designates at least one language of proceedings that is (a) an official language of the EU, and (b) an official language of the state(s) hosting the Division[1]. The full list is maintained by the UPC Registry, and at the time of writing includes German, Dutch, French, Danish, Finnish, Swedish, Italian, Portuguese, and Slovenian.
Thus, each Division has its own language(s) of proceedings, so the languages available depend on the Division in which an action is brought. Where an action can be brought was touched on in a previous article – the nature of the action is determinative. Infringement actions, for instance, can generally be brought in a Contracting Member State in which the alleged infringement occurred, or where a defendant is resident.
Tongue-tied: the pitfalls of many languages
In principle, the UPCA provides predictability for determining the language of proceedings. However, in practice things may become complicated, because the language of proceedings before the UPC is not necessarily the same as the language in which the patent at issue was granted by the EPO. This seemingly small detail has significant implications.
For example, where the language of proceedings and the language in which the patent was granted differ, parties and judges will be required to review a patent written in one language, and then participate in oral hearings in a different language. Thus, some parties and judges may be required to work in two languages, neither of which is necessarily their first language.
Further, decisions of the EPO Boards of Appeal are delivered in the language in which the patent was granted[2], and protective letters must also be filed in the language of the patent[3]. Thus, EPO Board of Appeal decisions concerning the patent at issue in the UPC[4], and protective letters concerning the patent, may also need to be interpreted in a language different to that in which they were written.
With patents and EPO decisions often involving specialist scientific content already, the need to read and debate in different languages may bring unnecessary complexity to the UPC. The cost of translation may also be a factor for parties, particularly where many documents are filed.
The language in which the patent was granted: lingua franca?
At least some of this complexity may be remedied by using, as the language of proceedings, the language in which the patent at issue was granted. This would avoid the need for switching between languages when reading and speaking about the patent and any EPO Board of Appeal case law concerning the patent.
The most straightforward means for having a case heard in the language in which the patent was granted, is for a claimant to pick that language when filing their action, provided that the Division concerned has made the relevant official language of the EPO available as a language of proceedings[5]. Since 1st June 2023, all Local and Regional Divisions of the UPC, as well as the Central Division, offer English as a language of proceedings[6], and almost 80% of patents granted in the last 20 years are in English[7]. Drafting submissions for an action in English also has the advantage that English can be used in any of the Local and Regional Divisions, thereby retaining flexibility if a decision is still being made as to where to bring an action.
War of words: languages as an issue for early actions
But what of actions that have already been filed? English was not available as an additional language at every Local Division prior to 1st June 2023, including Local Divisions in Germany, France, and Italy. The adoption of English may have come too late for actions filed not long after the Court opened. We therefore have a situation in which the UPC’s first cases may involve multiple languages, despite the flexibility built into the UPCA and now adopted by each Division.
Under these circumstances, participants may wish to consider directly applying to use the language in which the patent at issue was granted as the language of proceedings. This can be done under the circumstances listed below, though the language cannot be changed unilaterally:
- The parties may jointly apply to use the language of the patent[8], at any time in the written procedure[9] (subject to agreement of the panel);
- The judge-rapporteur may of their own motion decide to use the language of the patent[10], at any time during the written or interim procedures[11] (subject to agreement of the parties); or
- One party may apply to use the language of the patent[12] (subject to decision of the President of the Court of First Instance having heard other parties and the panel).
Aside from simplifying proceedings for all concerned, patentee-claimants in particular may seek to change the language of proceedings to the language in which the patent was granted, for reasons of familiarity. Conversely, defendants do not have a say in the initial filing of the action against themselves, and consequently, do not have a say in the language of proceedings chosen by the claimant. Thus, defendants may avail themselves of the above provisions for changing the language of proceedings to use a language with which they are more familiar.
These are examples of motivations for specific parties to apply to change the language of proceedings, but what motivations are there for panels of judges to decide upon a change? Aside from simplifying proceedings for the parties, the potential requirement to work in two languages may reduce the number of panels that can be formed to handle the UPC’s caseload. The number of panels of judges comfortable to work in any two given languages (the language of the patent and language of proceedings) logically ought to be smaller than the number of panels comfortable to work in any one language. Proceedings may therefore be stalled, or individual judges could become extremely busy, if only a limited number of judges is comfortable working in the languages involved in an action – jeopardising the UPC’s minimal timelines from receiving an action to issuing a decision. Faced with this logistic challenge, the judges themselves could propose to switch the language of proceedings to that of the patent, to allow panels to be formed from a wider selection of the judges.
Will early UPC actions see disputes over the language of proceedings?
Language of proceedings may well prove to be one of the very earliest battles in UPC actions. Indeed, a contentious application to change the language of proceedings has already been granted in ORD_581189/2023 (UPC_CFI_239/2023), issued 18th October 2023. The case at issue is an infringement action brought by claimants Plant-e Knowledge B.V. and Plant-e B.V. against defendant Arkyne Technologies S.L., over patent EP2137782. The claimants brought the action in Dutch. Using option (3) above, the defendant applied to change the language of proceedings to English. English is the language in which the patent was granted, noted by the defendants as “the primary source of the legal discussion including the grant file”. The application was forwarded to the President of the Court of First Instance, Florence Butin, for an order. The claimants did not agree that the language of proceedings should be changed, arguing that they were Dutch parties bringing an action before a Dutch Local Division, and that translation costs would be limited for the defendant in view of efficient tools available for fairly accurate translation.
The President granted the application and ordered that the language of proceedings be changed to English, noting that it was not disputed that both parties had a good command of English and that this was the language in which exchanges prior to the infringement action were conducted. The Order states that:
[…] being sued before the Court in a language that they do not master is an important inconvenience for the Applicant even if being assisted by Dutch representatives.
The Order is appealable for 15 days after notification, but nevertheless presents interesting reasons as to why the change of language of proceedings was granted in this case.
Looking ahead, claimants will need to decide which language of proceedings to select when filing their actions, and defendants will need to be aware of their options for influencing the language of proceedings early.
