9. Language of the Proceedings

The UPC introduces a new framework regarding the language of the proceedings, considering the variety of languages of the Member States involved and setting the rules for their coordination. The regulation of the language of the proceedings is given by Articles 49, 50 and 51 of the UPC Agreement (UPCA) and by Rules 14, 271 (7), 321-323 of the Rules of Procedure (RoP).

1.     Language of Proceedings at the Court of First Instance

1.1  Local and Regional Divisions

Article 49 UPCA regulates the language of the proceedings before local and regional divisions and sets out two main criterias:

• The language of the proceedings shall be an official language of the European Union which, according to paragraph 1 of Article 49, is:

1. the official language – or one the official languages – of the Member State hosting the relevant division or
2. the official language (or languages) designated by the Member States sharing a regional division (i.e., the Nordic-Baltic regional division, currently the sole regional division existing).

• Notwithstanding the provisions of paragraph 1 above, according to Article 49 (2) UPCA the Member States may also designate as language of the proceedings of their local or regional divisions one or more of the official languages of European Patent Office (EPO) which are English, German and French.

The official UPC website currently shows this list of the languages chosen in the various local and regional divisions:

The general opinion regarding this choice of most Member States to put English alongside the official language/languages of the Member State is that it is based on the intention to attract international clients. This decision is quite recent for some Member States (such as France and Italy) and is greeted with great enthusiasm.

The UPCA sets a flexible system with regard to the language of the proceedings, granting the possibility to choose it amongst multiple languages especially in the two following cases:

• When the Member State hosting the local division has more than one official language (for example Belgium which has three official languages: Dutch, French and German, as shown in the list below (art. 49.1 UPCA and R. 14.1, lit. a) RoP)
• When the Member State added one or more languages of EPO (English, German and French) (art. 49.2 UPCA and R. 14.1, b) RoP)

In these cases, R. 14,2, lt. a) RoP provides the possibility for the claimant to choose the language of the proceedings between the ones resulting from the aforementioned Articles 49.1 e 49.2 UPCA (official language of the Member State – one of the EPO’s languages (English, German and French).

RoP provides this possibility only for the revocation action (R. 45(2) and the declaration of non-infringement action (R. 64): the claimant’s choice of the language is indeed set out for these two actions when parties have agreed to bring the action before a local or a regional division in accordance with Art. 33(7) UPCA.

The competent Court can hold oral hearing and issue the decision in the official language of the Member State hosting the competent Court: in case the language of the proceedings is one of the EPO official languages (and therefore different from one of the official languages of the Member State hosting the local or regional division), according to R. 14 (2) lit. c) the Judge Rapporteur may order that the judges use in the oral proceedings the official language of the hosting Member State (resulting from Art. 49 (1) UPCA and R. 14 (1) lit. a) RoP) and that the decision will be delivered in the same official language of the hosting Member State, together with a certified translation into the EPO official language chosen by the claimant pursuant to Art. 49 (2) UPCA and R. 14 (1) lit. b) RoP. In this case, translation costs will be borne by the Court: this is an exception to the general principle in the UPC system that the translation costs are borne by the losing party. The aim of this provision is to facilitate local courts to rule in their mother tongue when the case is heard in a language other than their own one, i.e. one of the three EPO languages.

There is a limitation provided by R. 14 (2) lit. b) RoP for the choice of the language by the claimant which is applicable only for infringement actions and not for revocation and declaration of non-infringement actions, since these actions are brought before the Central Division. This limitation holds for an action brought against a defendant before the local division of the Member State where the defendant has its residence/principal place of business (therefore according to art. 33 (1) b) UPCA) but there is no tort jurisdiction available before any other local and regional division according to Art. 33.1, lit. (a) UPCA. Indeed, in this case the language of the proceedings shall be chosen between:

•  the official language of the Member State hosting the competent division
•  the official language spoken by the defendant or at its residence.

1.2 Central Division

The basic rule for the Central Division is that the language of the proceedings is the one in which the patent concerned was granted (Art. 49 (6) UPCA).

This criterion applies for all proceedings pending before the central division:

• revocation action
• declaration of non-infringement action
• counterclaim for revocation raised as a defence in an infringement claim (in case the entire proceedings was referred to the central division pursuant to art. 33 (3) lit c) UPCA)
• infringement, in cases where the related action is brought before the Central Division

1.3 Change of language

In some cases, the language may change during the proceedings. This can happen when the action is transferred from the local to the central division and the language change due to this transfer. In this case, the defendant is entitled to obtain a translation (art. 51 UPCA).

Change of the language is also possible (i) when multiple cases pending in different division, which depend to the same dispute, are joined together (R. 340 RoP) or (ii) when the Court of the local division decides to bifurcated the claim so that only part of the entire claim (e.g. the nullity claim) is sent to the Central Division (Art. 33 (3) lit. b) UPCA). 

Furthermore, changes to languages are provided when the general criteria held by Article 49 (1) and (2) is superseded by the criterion of the language in which the patent was granted. This language can be selected as language of the proceedings in the cases set out in paragraphs 3-5 of Art. 49 UPCA, here below listed:

• with the agreement of the parties subject to approval by the competent panel; in case of non-approval, parties may request that the case be referred to the central division and the action shall be transferred accordingly (Article 49(3) - R. 321 RoP) 
• when the Judge Rapporteur proposes (on its own motion or on a request by a party) that the language of the proceedings be changed in the language in which the patent was granted; in this case the language is change if the parties and the panel agree (Article 49.4 – R. 322)
• with one party’s request (included in the statement of claim or in the statement of defence) accepted by the President of the Court of First Instance (Article 49.5 – R. 323)

Finally, the language could change in case the language of the proceeding is the one in which the patent concerned has been granted and the initial action is followed by subsequent amendments by including additional patents granted with different languages. 

2. Language before the Court of Appeal 

Regarding the Court of Appeal of the UPC, the language of the proceedings is the language used in proceedings before the Court of First Instance of that case.

It is possible to change the language of the first instance proceeding:

• to the language of the patent granted without agreement of the Court (Art. 50.2 UPCA)
• to other language with the agreement of the parties (Art. 50.3 UPCA)

In these two cases Judge Rapporteur may demand translations and UPC system provides sanctions in case of non-compliance.

This article is edited by  Mattia Dalla Costa , Alessia Ferraro e Anna Iorio

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