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Background
19 April 2024

UPC Court of Appeal rules on changing the language of proceedings

The Court of Appeal (CoA) of the Unified Patent Court (UPC) has given guidance on changing the language of proceedings in upholding the appeal against the Court of First Instance (CFI) decision to refuse the application to change the language of proceedings from German to English in 10x Genomics v Curio Bioscience (UPC_CFI_463/2023). The decision (ORD_18194/2024) provides clarity on this issue and should make it easier for defendants to change the language of proceedings into the language in which the patent was granted. In the majority of cases, this is English.

Background

The UPC Agreement (UPCA) provides that the language of proceedings in the central divisions shall be the language in which the patent was granted. This must necessarily be one of the official European Patent Office (EPO) languages, namely English, German, or French.

However, the arrangements in local and regional divisions are slightly different.  In these divisions, the language of proceedings is an official EU language of the country hosting the division or the official language designated in a regional division. Furthermore, the country in which the local or regional division is hosted may designate one or more of the official EPO languages as possible languages of proceedings.

Where there is a variety of potential languages available, the claimant (typically the patentee in these cases) can make a choice in filing their statement of claim. Inevitably, claimants will tend to select the option which offers them the highest perceived advantage. A defendant has the option to challenge the selected language and ask instead that the language of proceedings should be the language in which the patent was granted. In such cases, the President of the CFI makes a determination “on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant” (Article 49 UPCA).

The application of these provisions in the various cases has raised some questions as to what the relevant circumstances are and the bar that the defendant has to meet. In the first such case in Plant-e Knowledge v Arkyne Technologies (ORD_581189/2023), which we reported on here, the President of the CFI allowed the language of proceedings to be changed from Dutch to English before the filing of the Statement of Defence. The main reasons cited were the fact that keeping the language of proceedings in Dutch would be “significantly detrimental” to the defendant and changing the language of proceedings to English would not disadvantage the claimant, which has a good command of English. This decision helped allay concerns that the language of proceedings chosen by the claimant may be used as a means of applying financial pressure on the defendant in the proceedings by imposing translation costs on the defendant, but the reference to “significantly detrimental” seemed to set a relatively high bar for change.

With this in mind, in the case which is the subject of this CoA decision, namely, 10x Genomics v Curio Bioscience (UPC_CFI_463/2023), the President of the CFI rejected the application by Curio Bioscience to change the language of proceedings from German to English.  This decision cited the “significantly detrimental” test of Plant-e Knowledge, and noting that the applicant had not provided any evidence to show that they are an SME as claimed, refused to change the language of proceedings. The same “significantly detrimental” test was also used by the President of the CFI in Advanced Bionics v MED-EL (ORD_13321/2024) in rejecting the application to change the language of proceedings from German to English. Here, one of the arguments put forward by the defendant was that they had already initiated revocation proceedings against the patent at issue at the Paris Central Division in English. Also, in Seoul Viosys v Laser Components (ORD_10099/2024), the CFI rejected the application by the defendant to change the language of the proceedings from French to English. The reason put forward by the defendant was the inconvenience caused by the fact that the working language of their representative and of potential interveners is not French. In its reasoning, the decision stated that “serious grounds” (“motifs sérieux”) had not been established for changing the language of proceedings.

Taken together, the above decisions in which a change of language was not granted seemed to set a high bar for a defendant applying to change the language of proceedings.

The CoA decision and the relevant circumstances

In upholding Curio’s appeal against the decision in UPC_CFI_463/2023 and ordering the change of language of proceedings from German to English, the CoA emphasises that all the relevant circumstances should be taken into account.  The circumstances should primarily relate to the specific case and the position of the parties.

As examples, the Court cites the following factors as being relevant: the language mostly used in the field of technology concerned; the language of evidence; the language of the applicant, irrespective of the language of the representative, given the time and costs involved in translating statements and evidence; the relative size of the parties; and whether the change of language may lead to delay, which would be disadvantageous to the claimant. However, this consideration should be balanced by the extra burden placed on the defendant given the strict timelines involved.  Irrelevant factors cited include the specific language skills of the representative and the nationality of the judges.

Particular significance is placed on the language of the patent and the fact that this was the language chosen upon filing the application for the patent. Even if the claimant is not the original applicant, the Court considers that the claimant would have recognised the fact that the patent is in the language that it is in when acquiring the patent, would have understood that the language of proceedings at the EPO is the language of the patent, and would anticipate that litigation may have to be conducted in the language of the patent before the central division.  Furthermore, the language of the patent is in any case often important in infringement proceedings, such as with claim construction. Such considerations are taken to imply that as a general rule changing the language of the proceedings to the language of the patent cannot be considered unfair on the claimant.

Crucially, the Court states that where “the outcome of balancing of interests is equal, the position of the defendant is the decisive factor”.

Taken together, these comments appear to suggest that any requirement for “significant detriment” to the defendant no longer applies. Instead, the claimant will need an active interest which outweighs that of the defendant in order to resist a change of language to the language of the patent; this appears from the CoA’s reasoning to be a challenging argument to make. As such, it seems likely that in the future many cases will be litigated in the language of the patent, regardless of the local or regional division in which the action is pursued. With the majority of European patents granted in English (EPO statistics show around three quarters of unitary patents are in English, for example) this seems to suggest that the Court may well trend towards the use of English in the majority of proceedings.

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