http://ipkitten.blogspot.com/2024/04/upckat-court-of-appeal-gives-guidance.html
| Which language will it be? The AmeriKat sporting colors (and food) from the EPO’s official languages |
About 15 years ago, the AmeriKat started her, sometimes, daily IPKat reporting on the unitary patent package. This, even before, the CJEU challenge on language. Fast forward to 2024 (and skipping over the annus horribilis of 2016), we are nearing the first anniversary of the UPC opening its doors. Now that we are getting into the pace of the UPC, the IPKat is picking up the pen again to start weekly reporting. The AmeriKat is not alone this time. The IPKat now has on-the-ground reporting from UPC advocate and guest UPCKat Agathe Michel-de Cazotte and members from the team at Carpmaels will bring news from the courts.
Over to the team who reports on this week’s Court of Appeal decision on the language of UPC proceedings (UPC_COA_101/2024):
“On 17 April, the UPC Court of Appeal issued their first decision relating to article 49(5) Unified Patent Court Agreement (UPCA) according to which a party can request that the language of proceedings be changed to the language of the patent. This article reads (emphasis added):
“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.”
This decision comes at a time where more UPC infringement proceedings are filed in the language of the patent; however, half of the infringement proceedings at the UPC are in German still when only approximately 10% of the patents granted by the EPO are in German.
The Court of Appeal provides clear guidance on the meaning of this article, in particular on how “may”, “relevant”, and “position of the defendant” can be understood. An official English translation of the Court of Appeal’s decision can be found here. 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.
“may”
In the past few months, the President of the Court of First Instance received several requests based on article 49(5) UPC. Some resulted in a change of language, others did not. Indeed, the decision is taken on a case-by-case basis as it should take “into account all relevant circumstances”. The Court of Appeal underlines that the President has discretionary powers when assessing fairness and therefore there is only a limited review of this decision on appeal.
“all relevant circumstances”
Nevertheless, this week’s Court of appeal decision provides a lot of detail on what circumstances could be relevant in assessing a request for a change of language.
Indeed, it lists circumstances that could be considered relevant or not depending on each specific case.
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Relevant circumstance |
Irrelevant circumstance |
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Language most commonly used in the field of technology and in |
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The nationality or domicile of a party: a party must be able to fully |
The fact that a representative speaks the language of the proceedings |
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Translations are time-consuming and costly |
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The size of the parties relative to each other and |
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A change of language can result in a delay which is usually |
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Prevalence of current language |
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Nationality of the judges at first instance. NB: If a party suspects that some of the judges on the panel will not |
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The language of the patent is the language of any EPO proceedings and |
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“in particular the position of the defendant”
The decision also explains that if, when balancing the interests, the judge finds that the parties would be in a similar situation (parties were “equally inconvenienced” is what the President of the Court of First Instance found 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 applies its ruling to the facts (which we won’t discuss in this post), it appears clear that the Court of Appeal does not consider that the parties’ interests are of the same weight.
Moreover, this conclusion that the defendant’s position should prevail is very different to that of the President of the Court of First Instance. The Court of Appeal justifies it based on the language of the article itself which specifically mentions the “position of the defendant”. In addition, it also turns 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 whatever 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 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.
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