[UPCKat] Court of Appeal gives guidance on change of language request

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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.

Relevant circumstance	Irrelevant circumstance
Language most commonly used in the field of technology and in particular the language of the evidence - including of the prior art
The nationality or domicile of a party: a party must be able to fully understand what is said on its behalf by a representative and the other party	The fact that a representative speaks the language of the proceedings does not solve the issues resulting from the fact that the language of the proceedings is not the language of the party
Translations are time-consuming and costly
The size of the parties relative to each other and whether they can organise their defences in an unfamiliar language with the same sort of resources
	A change of language can result in a delay which is usually detrimental to the plaintiff. However, in this specific case given the strict time limit regime of PI proceedings there was an additional burden on the defendant rather than an impact on the plaintiff
	Prevalence of current language of proceedings in the EU (said to be 20% native and 10% non-native speakers for German)
	Nationality of the judges at first instance. NB: If a party suspects that some of the judges on the panel will not understand the nuances of the case, they are free to file translations of their submissions and organise simultaneous translation at the hearing.
The language of the patent is the language of any EPO proceedings and UPC revocation actions, So, it has legal consequences, and the right holder should expect to have to conduct proceedings in that language, whether they filed the application or later acquired the case. Therefore, unless there are special significant circumstances pointing in a different direction, using the language of the patent is not unfair to the plaintiff.

“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.

Convenience for the first instance judges

It is interesting to note that sub-article 49(4) UPCA is the only provision of article 49 UPCA not mentioned in the decision, although it was discussed during the hearing. Indeed, this article mentions another ground to change the language – “convenience ” – but under different circumstances, specifically, where the parties agree on change of language. Convenience is not taken into account in this week’s decision. The Court of Appeal does minimise the inconvenience of this change of language for the first instance judges, who have already heard the case in German, by allowing the decision to be issued in German with a certified translation into English. This is a practical solution that avoids any interruption of the judges’ work in the underlying procedure, despite the fact that the ground of convenience is not mentioned in article 49(5) UPCA, the provision being applied in the present case.

Takeaway

This decision will no doubt have a strong impact on choice of language by plaintiffs wanting to avoid the distraction of having such change of language requests being discussed in proceedings they initiate when they see that there would be relevant circumstances for such requests."