Language of proceedings before the UPC

The decisions of the Unified Patent Court (UPC) apply equally in all participating member states and proper conduct of proceedings must be guaranteed. It is therefore of great importance to clearly and unambiguously regulate the question of the language of proceedings to be used. However, the determination of the language of proceedings in Art. 49 of the Agreement on a Unified Patent Court – UPCA in conjunction with Rule 14 of the Rules of Procedure of the Unified Patent Court – UPC RoP is characterized by a certain complexity.

Language of proceedings at the Court of First Instance – Local and Regional Division

For all proceedings that fall within the jurisdiction of the Court of First Instance within the meaning of Art. 33 UPCA, apply the rules of Art. 49 (1) UPCA. According to this the language of proceedings before any local or regional division shall be an official European Union language which is the official language or one of the official languages of the Contracting Member State hosting the relevant division, or the official language(s) designated by Contracting Member States sharing a regional division. For example, German is generally used as the language of proceedings in infringement proceedings before the local divisions in Germany, irrespective of the nationality of the defendant.

In addition to the basic language rules for the place of jurisdiction, the Contracting Member States may designate one or more of the official languages of the European Patent Office (English, German or French) as the language(s) of proceedings of their local or regional division (Art. 49 (2) UPCA). For example, the Nordic-Baltic Regional Division (based in Stockholm, Sweden) has chosen English as the sole language of proceedings, even though it is not an official language in any of the four participating member states. In addition, all Contracting Member States have designated English as an additional language of proceedings before their local or regional divisions.[¹] It is therefore to be expected that foreign applicants will choose English as the language of proceedings before the German local divisions.

If a local or regional division has designated several languages of proceedings pursuant to Art. 49 (1) and/or (2) UPCA, the claimant may choose any of these designated languages as the language of proceedings (Rule 14. 2 (a) UPC RoP). However, this privilege of the claimant is restricted by the exceptions in Rule 14. 2 (b) and ( c ) UPC RoP:

1. Rule 14. 2 (b) UPC RoP contains the ‘small local supplier’ clause, which protects defendants operating locally. If the infringement has only occurred on a small scale or only in the Member State in which the defendant is domiciled, so that the case can only be heard there (Art. 33 (1) (a) UPCA), the national language of the defendant must be used. The language of the proceedings therefore remains the official language in accordance with Art. 49 (1) UPCA. This ensures that these defendants are only sued in their ‘home language’. In this respect, however, it should be noted that court proceedings in the Nordic-Baltic regional division are always conducted in English, so that it is not possible to sue a defendant in this regional division in his national language. In addition, if a Member State has several official regional languages, the proceedings will be conducted in the official language of the region in which the defendant is domiciled or has his principal place of business. Similarly, if a Member State has several official languages, the proceedings must be conducted in the official language which is the same as the language of the defendant. Thus, the use of official languages is restricted in accordance with Art. 49 (1) UPCA and Rule 14. 1 (a) UPC RoP.
2. Rule 14. 2 ( c ) UPCA RoP provides for the choice of language by the Unified Patent Court. If a local or regional division designates an official language of the relevant Contracting Member State (under Article 49 (1) UPCA) and an official language of the EPO (under Article 49 (2) UPCA) and the claimant has chosen the official language of the EPO as the language of the proceedings, the judge-Rapporteur may, in the interest of the Court, order that the judges may use the official language of the Contracting Member State in the oral proceedings and for the adoption of orders and decisions. For example, a claimant who brings an action before a German local division could choose English as the language of proceedings, but the judges could decide to use German for the oral hearing and the written decision. In this case, a certified English translation will also be attached. However, this exception does not apply to the defendant, who must defend himself in the language chosen by the claimant. Furthermore, this provision only applies to the national language. It is therefore not possible for the court to hear a case in English, for example, if the claim has been filed in the national language.

Furthermore, the language in which the patent was granted can be used as the language of the proceedings. This can be done either at the request of both parties subject to the agreement of the competent panel (Art. 49 (3) UPCA, Rule 321 UPC RoP) or at the proposal of the judge-rapporteur (after consultation with the competent panel) with the agreement of the parties (Art. 49 (4) UPCA, Rule 322 UPC RoP). The request of the parties can be submitted at any time during the written procedure (Rule 321. 1 UPC RoP). If the competent panel does not grant this request, the parties can request a referral to the central division (Art. 49. 3 sentence 2 UPCA, Rule 321. 3 UPC RoP). However, the proposal of the judge-rapporteur can take place at any time during the written and the interim procedure (Rule 322 UPC RoP).

As an alternative to the options mentioned above, the President of the Court of First Instance may also decide, at the request of a party and after hearing the other parties and the competent panel, that for reasons of fairness and taking into account all relevant circumstances – including the positions of the parties and in particular the position of the defendant – the language in which the patent was granted shall be used as the language of the proceedings (Art. 49 (5) UPCA, Rule 323 UPC RoP). According to the wording of this provision, the President of the Court can also issue this order against the will of the other party and even against the will of the court panel seised and, if necessary, make it subject to the necessary translation or interpreting arrangements (Rule 323. 3 UPC RoP). The corresponding request of a party to use the language of grant of the patent as the language of the proceedings must be attached to the statement of claim or the statement of defence (Rule 323. 1 UPC RoP).

Language of proceedings at the Court of First Instance – Central Division

According to Art. 49 (6) UPCA, the language of proceedings before the Central Division is the language of grant of the patent. In addition, Art. 51 (3) UPCA provides that, if the above conditions are met, relevant documents shall be translated into the language of the Member State in which the defendant is domiciled or has his principal place of business. In view of the fact that most European patents are granted in English (the proportion of German or French patents is significantly lower), it can be assumed that proceedings before the central division are generally conducted in English.

Language of proceedings at the Court of Appeal

The language of proceedings before the court of appeal is the language of proceedings before the court of first instance (Art. 50 (1) UPCA). In addition, the parties may agree on the use of the language in which the patent was granted as the language of proceedings (Art. 50 (2) UPCA). In exceptional cases and if deemed appropriate, the court of appeal may, with the consent of the parties, designate another official language of the contracting member state as the language of the proceedings, which may be used for the entire proceedings or even for parts of the proceedings (Art. 50 (3) UPCA).

Language requirements for the written procedure

If the language of the proceedings is specified, all pleadings and other documents, including written evidence, must be submitted in that language, unless otherwise provided by the Court or the Rules of Procedure (Rule 7. 1 UPC RoP). All subsequent decisions and orders of the court are also drafted in the language of the proceedings (Art. 77 (2) UPCA).

For translations of pleadings or other documents required by the Rules of Procedure or the Court, it shall not be necessary to provide a formal certification by the translator as to the accuracy of such translation unless the accuracy is challenged by a party or such certification is ordered by the Court or required by these Rules (Rule 7. 2 UPC RoP). For example, machine translations of documents relating to prior art can be submitted without formal legalisation, saving considerable time and money for the parties. Nevertheless, all panels of the Court of First Instance and the Court of Appeal may dispense with a translation if they deem it appropriate (Art. 51 (1) UPCA).

As regards the acceptance of a Statement of Claim which is not in a language or is not accompanied by a translation in a language which the defendant understands or which is an official language of the place where service is to be effected, the Registry will inform the defendant that he may refuse to accept it (Rule 271. 7 UPC Rules of Procedure). If the defendant is entitled to refuse to accept service of the Statement of Claim, he must notify the Registry accordingly within two weeks of the attempted service, indicating the language(s) he understands. The Registry will inform the claimant, who will send a translation of at least the Statement of claim in the intended language (Rule 271.8 UPC Rules of Procedure). In addition, the defendant may lodge an objection concerning the language of the application within one month of service of the Statement of claim (Rule 19. 1 ( c ) UPC RoP).

Language of the interim proceedings

The interim hearing may be held by the judge-rapporteur in any language agreed upon by the parties’ representatives (Rule 105. 3 UPC RoP).

Language in a Counterclaim for revocation

A Counterclaim for revocation must be filed in the language of the infringement proceedings. The question arises as to whether a Counterclaim for revocation can be filed in English, even if the infringement action was filed in German.

The answer to this question is not easy, as special conditions must be taken into account: In principle, the rule is that the language of the infringement proceedings is the language of the local or regional division in which the action is filed (e.g. German if the action is filed in Germany). In the case of a Counterclaim for revocation, the local or regional division concerned may decide at its own discretion (Art. 33 (3) (a), (b), ( c ) UPCA): i) to hear both actions in the language of the infringement proceedings or ii) to refer the Counterclaim for revocation to the central division, where the language of grant of the patent – i.e. in most cases English – is used as the language of the proceedings. Furthermore, the parties have the possibility to agree on the language in which the patent was granted, e.g. English, as the language for the counterclaim for revocation, subject to the approval of the court (pursuant to Art. 49 (3) UPCA). In addition, the court may, with the consent of the parties, for reasons of expediency and fairness, determine the language in which the patent was granted as the language of the proceedings (Art. 49 (4) UPCA).

In summary, the defendant could attempt to file its Counterclaim for revocation in English. Whether this determines the language of the Counterclaim proceedings depends on whether the competent local or regional division decides to hear both claims in German or decides to refer the Counterclaim for revocation to the central division, where English is increasingly used.

Language of the application to amend the patent

The patent proprietor may file an application to amend the patent together with the Defence to the Counterclaim for revocation (Rule 29(a) UPC RoP). The proposed amendments of the claims of the patent concerned and/or specification (including any auxiliary requests) must be filed in the language in which the patent was granted (Rule 30. 1 (a) UPC RoP). If the language of the proceedings is not the language in which the patent was granted, the patent proprietor must file a translation of the proposed amendments into the language of the proceedings. In the case of a European patent with unitary effect, the proprietor must file a translation of the proposed amendments in the language of the defendant’s domicile in a Member State of the EU or of the place of the alleged infringement or threatened infringement in a Contracting Member State, if so requested by the defendant (Rule 30. 1 (a) UPC RoP).

UPC decisions concerning the language of proceedings

The UPC has already made a number of decisions concerning the language of proceedings. According to the UPC’s annual report 2024[²], the court weighs the interests of the parties involved with great care when examining requests to change the language of proceedings and ensures fair competition through a balanced approach.

The decisions UPC_CoA_101/2024 (Curio Bioscience v. 10x Genomics) and UPC_CFI_88/2024 (Tandem Diabetes Care Inc. & VitalAire GmbH v. Roche Diabetes Care GmbH), which concern a request to change the language of the proceedings to the language of the patent, emphasise that all relevant circumstances must be taken into account for reasons of fairness. The relevant circumstances should primarily relate to the specific case and the position of the parties, in particular the position of the defendant. The position of the defendant is the decisive factor when interests are weighed equally. The decision UPC_CoA_349/2024 (Google Commerce v. Ona Patents) specifies the relevant circumstances that should be taken into account when requesting a change to the language of the proceedings. These include the internal working language of the parties, the possibility of internal coordination and support in technical matters.

Furthermore, the decision UPC_CoA_207/2024 (Advanced Bionics v. MED-EL Elektromedizinische Geräte) clarifies that Art. 49 (5) UPCA does not require the request for a change of language to be included in the statement of defence. In light of this, Rule 323 UPCA should be interpreted as meaning that the filing of the request before the statement of defence is not excluded and even makes more sense, as it ensures that, in the event of a successful request, the language change can be implemented at an early stage of the proceedings.

Author: Dr. Olga Michala

E-mail: michala@paustian.de

[¹]  For more information, see: https://www.unifiedpatentcourt.org/en/court/language-proceedings

[²]  https://www.unified-patent-court.org/sites/default/files/upc_documents/UPC_AR_2024_HD_digital_version_double_page_compressed.pdf