The impending entry into force of the Unified Patent Court (UPC) and the “European patent with unitary effect” according to the Agreement on a Unified Patent Court (UPCA), means that applicants/patentees and potential litigants under the UPC should be aware of the applicable language regime and translation requirements.
With governing laws stemming from a number of bodies (primarily: COUNCIL REGULATION (EU) No 1260/2012 of 17 December 2012, the EPC, the UPC Agreement and the UPC Rules of Procedure), the language regime aims to take into consideration the already existing three-language system of the EPO and the existing languages in Member States, while intending to accommodate small and medium-sized enterprises (SMEs). By consequence, the language “landscape” requires careful navigation.
I. Language of the patent
As is the case with the current European bundle patent, the specification and patent claims must be filed in one of the official EPO languages, i.e. English, French or German. Translations of the patent claims into all official EPO languages must also be provided. In order to reduce translation costs, further translation of unitary patent applications will eventually not be required.
For the time being, a further translation requirement applies during the up to 12-year transitional period (Art. 6 of Council Reg. (EU) No. 1260/2012). With the aim of gathering translated material for the improvement of the EPO machine translation tool, Unitary Patent applications must be translated either into English (if the patent is granted in French or German), or into one of the – 24 – official EU languages (if the patent is granted in English).
II. Language of proceedings
Litigation is conducted in the “language of proceedings”. This includes the delivery of decisions and orders of the court (Art. 77 (2) UPC Agreement). It also pertains to the written pleadings and written evidence (Rule 7).
Article 49 of the UPC Agreement governs the language of proceedings at first instance. Courts of first instance are (i) the Regional Division, (ii) the Local Division and (iii) the Central Division.
1. Regional or Local Division
Here, the language of proceedings is either (i) an official EU language which is (one of) the official language(s) of the Contracting Member State, (ii) an official EPO language as designated by the Division, or (iii) in proceedings before the Regional Division, the designated official language(s) of the shared Regional Division. Alternatively, upon agreement by the parties, the language in which the patent was granted can be the language of proceedings.
2. Central Division
In proceedings before the Central Division, the language in which the patent was granted is the language of proceedings.
3. Appeal
On appeal, proceedings are conducted in the language of first instance or in the language in which the patent was granted. In exceptional cases, the language of a Contracting Member State may be adopted as the language of proceedings (Article 50 UPC Agreement).
III. Language of oral proceedings
In proceedings before the Regional Division or one/more Local Divisions hosted in a Contracting Member State, oral proceedings are conducted in (one of) the official language(s) designated as language(s) of proceedings according to Art. 49(1).
IV. Translations
1. Service of complaint
Pursuant to Art. 12 of Regulation (EU) 2020/1784 on the service of documents, the defendant is entitled to refuse service within two weeks of receipt if the statement of claim is not written in/accompanied by a translation into a language which he understands or is an official language at the place of service. Insofar, Rule 271.7 obliges the registry to inform the defendant of his right of refusal.
2. Translations during proceedings
General
In general, translations filed during the proceedings need not be certified (Rule 7.2). Certified translations are however required in order to initiate enforcement of a decision on the merits (Rule 118.8). Apart from this, the court has some flexibility regarding translations and may even dispense with translation requirements (Art. 51 (1)).
Central Division
In infringement proceedings before the Central Division, a defendant is entitled to request translation of relevant documents into the language of his/her Member State of residence or principal place of business (Art. 51 (3)). A further stipulation specific to the Central Division applies where a counterclaim for revocation is referred to the Central Division by a Local/Regional Division (with or without agreement of the parties) and the language of proceedings of the referring Division is not the language in which the patent was granted. In such cases, the parties can be ordered to file translations of already submitted written pleadings and other documents into the language in which patent was granted (Rule 39).
Appeal
On appeal, if the language of proceedings before the Court of Appeal is not the language of proceedings before the court of first instance, the judge-rapporteur may order the appellant to file translations into the language of proceedings before the Court of Appeal of written pleadings, other documents, court decisions or orders (Rule 232).
3. Translation of decisions on the merits
In order to enforce a court decision, a certified translation into an official language of the Contracting Member State in which the enforcement shall take place must be provided by the claimant.
V. Costs
Translation costs can be reimbursed through the separate proceedings for cost decision (Rule 150). However, costs for interpretation and translation required for the judges of the court in order to conduct the case in the language of proceedings are borne solely by the court.
VI. Strategic considerations
1. Language of proceedings as a strategic tool?
Initially, the choice of language of proceedings is up to the plaintiff (Rule 14.2). With the number of languages available depending on the respective court, a claimant might consider choosing a less common language for the purpose of increasing the defendant’s workload. That being said, choice of a less common language will likely require a translation of the statement of claim to initiate proceedings and will likely be met by the defendant’s – or the judge-rapporteur’s – request to change the language of proceedings to language in which the patent was granted.
2. Challenging the language of proceedings
Preliminary objection
The defendant can file a preliminary objection concerning the language of the statement of claim within one month of service (Rule 19.1). After the claimant has been asked to comment on the preliminary objection within 14 days (Rule 19.4), the preliminary objection is either decided on by the judge-rapporteur “as soon as practicable” (Rule 20.1) or dealt with during the main proceedings (Rule 20.2). If the judge-rapporteur decides on the preliminary objection, the following scenarios are possible:
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A decision of the judge-rapporteur allowing the preliminary objection may be appealed pursuant to Rule 220.1(a), i.e. like a final decision of the court of first instance (Rule 21.1). Thus, if the judge-rapporteur grants the defendant’s preliminary objection, it can be immediately appealed by the claimant.
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An order of the judge-rapporteur rejecting the preliminary objection may only be appealed pursuant to Rule 220.2, i.e. together with the appeal against the decision or with the leave of the court within 15 days of service (Rule 21.2). Should the court refuse leave for appeal, a discretionary review by the court of appeal may be requested (Rule 220.3). Thus, if the judge-rapporteur rejects the defendant’s preliminary objection, the decision can be appealed by the defendant either together with the final decision of the court of first instance or, separately, provided that leave is granted by the court.
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If an appeal is filed, proceedings at first instance may be stayed by the judge-rapporteur or the Court of Appeal on a reasoned request by a party (Rule 21.2). Further, the judge-rapporteur may adjust the deadline for filing the statement of defence (Rule 19.6). Should leave for appeal be granted, the defendant could therefore try to obtain a stay of proceedings pending the outcome of the appeal (cf. also Art. 74 (1)).
The preliminary objection can be filed in the language(s) of proceedings according to Rule 14.1, i.e. the official European Union language or the official language of the EPO designated by the respective Division (Rule 19.3 and Rule 14.1).
Further objections to the language of proceedings
Unlike the preliminary objections against the jurisdiction and competence of the court and the competence of the division chosen by the claimant, the failure to file a preliminary objection concerning the language of the statement of claim within a month is not the defendant’s last resort for challenging the language of proceedings (Rule 19.7). By contrast, the defendant can request for proceedings to be conducted in the language in which the patent was granted in the statement of defence (Rule 323.1). Further, the judge-rapporteur can make the same request during the written and the interim procedure (Rule 322). A change of the language of proceedings during pending proceedings can result in further translation requirements (Rule 324). Thus, objections to the language of the proceedings or requests to change the same can increase the claimant’s workload and cause additional expenditure if (further) translations are required. Where a claimant seeks to avoid any subsequent change to the language of proceedings, choosing the language in which the patent was granted can help to mitigate the risk of language-related delays.
A definite risk of delay exists where a party – likely the claimant – challenges an order pursuant to Art. 59 (5), i.e. where the president of the court of first instance upon request by one of the parties orders on grounds of fairness the language in which the patent was granted to be the language of proceedings. Here, an appeal against such order is one of the explicitly mentioned cases in which a first instance decision cannot be handed down before the court of appeal has ruled on the appealed order (Art. 74 (3)). Thus, if the defendant succeeds in prompting the president of the court to make the language in which the patent was granted the language of proceedings, it can be advisable for the claimant to accept rather than appeal this order for the sake of preventing a delay in the timing of the first instance judgment.
3. Relevance of complying with language/translation requirements
While service of a statement of claim on a defendant in a language he/she does not understand results in a right to refuse receipt, filing briefs in the wrong language is met with more severe consequences. Hence the registrar shall return any pleading filed in a language other than the language of proceedings (Rule 14.4). This can result in undesirable delay in filing and service on the opposing party.
Further, when a first instance decision is appealed and the language of proceedings on appeal differs from that at first instance, the appellant should ensure timely filing of translations of the first instance decision, pleadings and other documents requested by the judge-rapporteur. Otherwise, the judge-rapporteur may issue a default judgment (Rule 232.2 and Rule 357). Insofar, the judge-rapporteur is not required to examine (“may examine”) the merits of the appeal. Appellants should avoid this risk by ensuring that the necessary translations are available and filed on time.
In summary, the language and translation requirements necessitate careful consideration and preparation. Translation requirements can arise where a case is referred from one Division to another or where a judgment is appealed. Parties should also consider the possible languages of proceeding and ensure that their team of legal representatives can ensure proficiency in all relevant languages.
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