UPC Court of Appeal defines timeline and justification for changing the language of proceedings

On 17 April 2024, the UPC Court of Appeal (CoA) issued an order changing the language of proceedings from German to English in the ongoing infringement case between American Biotech companies 10x Genomics, Inc. and Curio Bioscience Inc. (UPC_COA_101/2024). The Düsseldorf (DE) first instance Local Division had previously denied the request to change the language based on, inter alia, a lack of evidence that Curio were disadvantaged by the proceedings being in German.

In this order, the CoA decided that the decision to change the language of proceedings can be made at any point before the Court of First Instance issues the final (written) decision, even if the oral procedure has already concluded. The CoA also emphasised that, all other factors being equal, the interests of the defendant are the deciding factor for whether the language of proceedings should be changed. 

The CoA’s observation that according to Art. 50 UPCA, the language of the appeal is decided by the language of proceedings in front of the Court of First Instance is of particular importance. However, the CoA decided that a party making an application to change the language of proceedings still has an interest in the request, even after the oral hearing in the main proceedings at first instance had been concluded. Consequently, the CoA determined that it was able to decide to change the language of proceedings on this particular matter, even though the oral procedure at first instance had been completed. 

The CoA discussed the factors it considered when deciding whether to change the language of proceedings. The factors relate primarily to the positions of the parties and the specifics of the case, including:
•    the primary language of the field of technology,
•    the primary language of evidence (including prior art),
•    the nationality or domicile of the parties,
•    the relative size and position of the parties, and
•    the possible delay to proceedings resulting from the change of language.

The CoA commented that the language abilities of the representatives and the nationalities of the judges should not be considered. This directly over rules some of the Düsseldorf Local Division’s earlier reasoning for refusing the request, and further clarifies that regard should primarily be given to the particulars of the case and parties.

The CoA remarked that. Art. 49(5) UPCA “provides that in particular the position of the defendant is to be taken into account”. The CoA referred to the advantages that the claimant has over the defendant in the UPC, including choice of forum and language of proceedings, and the luxury of time (except in urgent cases). The defendant, on the other hand, must comply with very short response deadlines from the moment that they are served the statement of claim. The CoA also highlighted that proprietors of European patents and users of the UPC have accepted that they may have to participate in proceedings in the language of the patent, either in front of the EPO or a UPC central division (pursuant to Art. 49(6)). Reading between the lines, the CoA implied that proceedings in the language of the patent are not and cannot be of detriment to the claimant, therefore concluding that if the interests of the parties are equal, “the position of the defendant is the deciding factor”.  

The CoA also commented on the impact of the language of proceedings on assessing infringement, noting, “in infringement actions, the language in which the patent was granted is often of importance”. The importance of language to claim interpretation is demonstrated in the main proceedings (UPC_CFI_463/2023) where a difference in how the English and German claims are construed was relevant to the order for provisional measures. The English claims and their construction, as the language of the patent, formed the basis of the decision. 

In April 2024, English overtook German as the predominant language of UPC proceedings.  As infringement and revocation proceedings take over from the initial rush of applications for provisional measures, will issues surrounding claim construction motivate parties to request that proceedings be in the language of the patent? The vast majority (circa 80%) of European patents are granted in English. However even now, only 48% of actions in the Courts of First Instance are currently in English1. It appears that the CoA has made it easier for the defendant to change the language of proceedings to the language of the patent and will act as an encouragement to parties in the future to use English as the language of the proceedings. As a result, can we expect to see the trend towards using English continue.

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References
1.    Case Load of the Court since the start of operation in June 2023 – Update end April 2024. UPC News (URL: https://www.unified-patent-court.org/sites/default/files/upc_documents/Case%20load%20of%20the%20Court_end%20April%202024_30.04_TK_edit%202_05_DC_final.pdf) Accessed 09/05/2024.