UPC: speaking in tongues

The launch of the Unified Patent Court (UPC) is imminent. The UK is now in a position to ratify the UPC Agreement, having earlier in March passed the legislation needed to implement the UPC and unitary patent in national law, while in February Germany started its ratification process. If the UK and Germany plus two additional countries complete ratification by the autumn then the UPC should be open for business in early 2017.

The issue of language has been the subject of much debate in the UPC negotiations. It was Spain and Italy’s objection to the tri-language regime of English, French and German for translating unitary patents that meant negotiations broke down in 2010. This led to the EU’s using the ‘enhanced cooperation’ process to exclude Spain from the unitary patent system. Spain and Italy subsequently filed complaints with the Court of Justice of the European Union (CJEU) about the use of the enhanced cooperation process and Spain filed a further complaint in 2011 challenging the legality of the unitary patent and its language regime.

Both challenges were dismissed by the CJEU. While the CJEU acknowledged that the Spanish language was treated differently, it held that this was appropriate in order to achieve a cost-efficient system. In 2015 Italy joined the unitary patent system and became the 26th member of the enhanced cooperation system, although it is still opposed to the language regime. Spain remains outside the unitary patent system.

The rules on language are set out in the language regulation—Council Regulation (EU) No. 1260/2012 for the prosecution of patents—and in the UPC Agreement for issues before the courts.

Prosecution rules

In accordance with standard European Patent Office (EPO) procedure, claims for a unitary patent must be filed in English, French and German, with the specification in one of those languages. There is a transitional period of up to 12 years during which translations will be required in order to have a granted European patent validated as a unitary patent. French and German language patents must be translated into English, while English language patents must be translated into any official language of the EU.

A compensation scheme is provided for small and medium-sized enterprises, natural persons, non-profit organisations, universities and public research organisations within EU member states. Under the scheme, costs of translating applications filed in an official EU language other than English, French or German will be reimbursed, up to a maximum level.

Once the transitional period has expired there will no longer be a translation requirement for unitary patents after grant. The intention is that, in time, machine translation will be used to provide all translations of unitary patents that might be required. Patent Translate, the EPO’s machine translation program, is being developed with Google. Once Patent Translate can provide high quality translations into all the official languages of the EU member states, the transitional period will end and no translation will be needed when seeking to validate a European patent as a unitary patent.

Litigation rules

The UPC will have a common Court of Appeal seated in Luxembourg and a decentralised Court of First Instance with local, regional and central divisions located in member states. The central division will have its formal seat in Paris with specialist divisions in London and Munich dealing with cases concerning specific patent classifications (London: human necessities, chemistry and metallurgy; and Munich: mechanical engineering, lighting, heating, weapons and blasting).

Any participating member state may host up to four local divisions, or two or more member states may group together to form a regional division. A number of local divisions are being established including one in London, one in Paris and four in Germany. Italy, the Netherlands and Belgium will also each host local divisions, with further local divisions planned in Austria, Denmark, Finland and Ireland. So far only one regional division has been established: the Nordic-Baltic division made up of Estonia, Latvia, Lithuania and Sweden, based in Stockholm and operating only in English.

In the main, revocation actions will be heard by the central division, with the local and regional divisions hearing infringement actions where an infringing act takes place or a defendant is based. The local and regional divisions can also hear revocation counterclaims or they can elect to send these to the central division. In contrast, if a revocation action is pending at the central division then the patentee can only bring an action for infringement at the central division.

“There is some scope for switching languages: parties can, with the court’s approval, mutually agree to use the language of the patent instead of the local or official language.”

The central division can also hear infringement actions in cases where the action could have been brought in a member state’s local or regional division but that state does not have such a division.

The language of proceedings in the Court of First Instance will be either the local language of the member state hosting the local division or the official language(s) designated by the member states sharing a regional division. It will be possible for member states to designate one or more of the official languages of the EPO (ie, English, German or French) in addition to, or instead of, the official language of the member state(s) as the language of proceedings of their local or regional division, subject to approval by the competent panel.

There is some scope for switching languages: parties can, with the court’s approval, mutually agree to use the language of the patent instead of the local or official language. Additionally, on the basis of fairness and taking into account all the relevant circumstances of the case, the judges can choose to conduct the proceedings in the language of the patent with the consent of the parties.

The general rule at the central division is that proceedings will be conducted in the language in which the patent was granted by the EPO. The majority of patents granted by the EPO are in English (anecdotally 70%), so it seems likely that most proceedings at the central division will be in English. The language in the Court of Appeal will be the language of the proceedings when the case was heard at the Court of First Instance. Table 1 summarises the courts and their applicable languages.

Table 1