Further Support for Use of English as Language of Proceedings at the UPC

On 17 April 2024 the Court of Appeal of the Unified Patent Court issued an interesting order (UPC_CoA_101/2024) allowing a switch of the language of proceedings from German to English, overturning a previous order of the President of the Court of First Instance to the contrary (UPC_CFI_463/2023). This order adds further support to use of English language in UPC proceedings.

Background

English is designated as an official language by all UPC member states, which allows for actions to be filed in English in any local or regional division of the UPC. The advent of the UPC however began with a disproportionate number of actions filed in German language compared to the number of European patents granted in German. It is thought that this occurred in part because the German government only announced the availability of English as an official language for German local divisions shortly before the UPC opened its doors. Actions that were being prepared for filing at German local divisions on opening of the UPC were therefore drafted in German.

Since the opening of the UPC, there has though been a noticeable shift towards the use of English at the UPC.  Many of the more recent infringement actions have been filed in English, including infringement actions in German local divisions. There have also been a number of orders in which applications to change the language of proceedings into English have been granted.

This gradual shift towards the use of English at the UPC is perhaps unsurprising. UPC judges have advocated at conferences for the use of English as the language of proceedings, on the basis that all UPC judges are fluent in English. Use of English also allows for benefits such as avoiding need for translations of documents or interpretation at hearings.

Details of the case

10x Genomics filed an application for provisional measures against Curio Bioscience at the Düsseldorf Local Division, in German. Curio Bioscience applied for a change of language of the proceedings from German to English (from the original language of the proceedings for provisional measures into the language of the patent as granted), which was rejected at first instance by the President of the Court of First Instance.

In rejecting the application for a change to English at first instance, the President had considered two previous orders (UPC CFI 225/2023 LD The Hague, order of 18 October 2023; UPC CFI 373/2023 LD Düsseldorf, order of 16 January 2024) where a change of language to English had been allowed, on the basis that the language initially chosen was significantly detrimental to the party requesting the change in language. Ultimately, however, the President denied the application because Curio Bioscience had not provided evidence that they were an SME, had not put forward any particular circumstance of the case that meant there was an issue of unfairness, and also since the Court’s interests alone could not prevail as the sole deciding factor in the matter.

In overturning the order issued at first instance and allowing a switch to English as language of proceedings, the Court of Appeal first set out a number of general principles that should be considered when deciding on a request to change the language of proceedings. First, the Court noted that all relevant circumstances should be taken into account, including the language mostly used in the field of technology involved, the language the evidence (including prior art) is primarily written in (reason 22), the nationality or domicile of the parties (reason 23) and the size of the parties relative to each other (reason 24).

Second, the Court noted that “Art. 49(5) UPCA provides that in particular the position of the defendant is to be taken into account. If the outcome of balancing of interests is equal, the position of the defendant is the decisive factor” (reason 28).

Third, the Court asserted that “as a general rule and absent specific relevant circumstances pointing in another direction, the language of the patent as the language of the proceedings cannot be considered to be unfair in respect of the claimant” (reason 34).

Applying these principles to the specific facts of the case, the Court decided that the request to change the language of proceedings into English should be allowed.

Comment

This decision provides further precedent, this time from the Court of Appeal, to the growing body of UPC case law in favour of allowing a change of the language of proceedings into English, when an action has been originally filed in a different language. With UPC judges also generally advocating for use of English in UPC proceedings, it appears that English will be more and more frequently used in proceedings at the UPC.