In general, the language of proceedings before the UPC Court of Appeal is the language used in the first instance proceedings. Before the central division of the UPC Court of First Instance, or where parties agree before a local division, the language of proceedings may be the language in which the patent granted. However, before any local or regional division, an official language of the hosting state(s) is available, but states may also designate one or more of the official European Patent Office (EPO) languages (English, French and German).

Notably, English is available before all of the UPC’s local and regional divisions, and is now the predominantly used language at first instance (50%), having gradually increased in use since the UPC’s statistics first published in December 2023.

Theoretically, UPC forum shopping allows a claimant to sue in an unfamiliar language However, an application can be made for changing the language of proceedings to that in which the patent granted. In the majority of cases European patents are granted in English. Two UPC Court of First Instance decisions granted a change in the language of proceedings to English, favouring the small and medium-sized enterprise (SME) defendants. Similarly, the UPC Court of Appeal has since issued an order overturning a UPC Court of First Instance decision to reject Curio Bioscience Inc’s request to change the language of proceedings from German to English.

Curio Bioscience Inc v 10x Genomics Inc

At first instance, the court decided that Curio Bioscience had not supported its argument of disproportionate disadvantage as an SME using an unfamiliar language, and otherwise failed to demonstrate that use of German was unfair. Curio Bioscience appealed against the order.

Admissibility

Admissibility of the appeal was questioned with regard to errors in the appellant’s and respondent’s names, and the timing of the request (between the oral hearing and the UPC Court of First Instance’s decision in the main proceedings).

However, the UPC Court of Appeal found the necessary formal requirements had been fulfilled elsewhere, and there is no obligation for a change of language of proceedings to be decided before the last oral hearing. Instead, it must be decided before the UPC Court of First Instance makes a decision in the main proceedings. Given that the first instance language of proceedings determines that on appeal the UPC Court of Appeal recognised the applicant’s continued interest in its request after the oral hearing.

Therefore, the appeal was admitted.

Merits: general principles

On the merits, the order discussed and exemplified the relevant general principles before applying them to the facts of the case.

In particular, the UPC Court of Appeal emphasised that when making the decision on grounds of fairness, all relevant circumstances must be taken into account, and these should primarily be related to the specific case and position of the parties.

For the specific case the UPC Court of Appeal considered the primary language of the technological field, and the language of the evidence (including prior art), to be relevant.

For the parties, their nationality or domicile, and their relative size and resources, were deemed relevant.

The court reasoned that a party unable to fully understand each party’s submissions is not compensated by representatives being proficient in the language of proceedings, as they still have to rely on translations.

The court also considered potential delays to proceedings, which are generally disadvantageous to a claimant. However, the UPC’s strict time limits were understood to be an extra burden for defendants using an unfamiliar language.

In contrast, a representative’s language skills and a judge’s nationality were not deemed relevant, and any risk of judges overlooking nuances in submissions could be mitigated by providing translations at the claimant’s cost.

The court acknowledged that Article 49(5) of the UPC Agreement states that the position of the defendant in particular is to be taken into account. Therefore, if the interests of both parties are considered equal overall the position of the defendant is the decisive factor.

The court explained that this is because the claimant benefits from several advantages when litigating via the UPC. They can choose any of the designated languages of the local or regional division, and often have the choice of when and where to bring the action. Also, they can spend any amount of time preparing the statement of claim (unless there is urgency), whereas the defendant must immediately adhere to the UPC’s strict time limits.

Moreover, the claimant chose the language in which the patent application was filed, and should be aware that this has legal consequences for EPO proceedings. Therefore, “as a general rule…the language of the patent as the language of the proceedings cannot be considered to be unfair in respect of the claimant”.

The UPC Court of Appeal noted that the language of grant is also (1) important to infringement actions; (2) the language of proceedings at the central division; and (3) available for parties to agree to use under Article 49(3) of the UPC Agreement.

Merits: present case

On the basis of those principles the UPC Court of Appeal considered arguments presented by Curio Bioscience (both parties are US companies; the language of the underlying technology field is English; and most documents in the proceedings are only available in English) were of considerable weight, and undisputed by 10x Genomics.

Although Curio Bioscience being an SME was disputed the UPC Court of Appeal did not consider this decisive. However, it did account for its smaller size, and the resulting disadvantage of using an unfamiliar language.

In contrast, the circumstances presented by 10x Genomics (30% of EU citizens speaking German; Curio Bioscience being active in Germany; and the language skills of the representatives and judges) were considered to be less or not relevant.

The Düsseldorf local division believed a delay in proceedings was likely in this case. However, the UPC Court of Appeal recognised that its decision could be delivered in German, together with a certified translation, limiting the additional work to translation of the decision.

Overall, the UPC Court of Appeal decided that “the order must be set aside, because it is based on an incorrect reading of what constitutes fairness and what circumstances are relevant under Art. 49(5) UPCA”. Therefore, the language of proceedings was changed to English.
The UPC Court of Appeal decided that there is no need for specific translation arrangements. However, should the order of the UPC Court of First Instance be appealed the parties are requested to file uncertified translations of their own first instance statements, at their own cost.

Costs

Both parties requested that the other party bears the cost of the change of language proceedings. The UPC Court of Appeal recognised that the outcome of the appeal should be considered but the decision on costs should only be made when the proceedings before the UPC Court of First Instance are concluded.

Implications for applicants

By discussing and exemplifying the general principles applicable the UPC Court of Appeal has provided further clarity about changes of language of UPC proceedings. Notably, such changes are not limited to SMEs. Therefore, claimants should not assume they will be able to cause trouble for smaller companies by forum shopping and suing in a language other than that in which the patent granted.

However, a number of requests have been rejected at first instance. Recently, in Advanced Bionics AG & Ors v MED-EL Elektromedizinische Geräte Gesellschaft mbH (UPC_CFI_410/2023), the UPC Court of First Instance found the applicants had not shown a significant disadvantage.

Although the defendant’s position in particular is to be taken into account, applicants seeking to change the language of proceedings on grounds of fairness should at least try to demonstrate significant detriment resulting from the circumstances of the case, or the position of the parties. As exemplified by the UPC Court of Appeal such disadvantage could result from the primary language of the technological field or evidence in the case, the applicant’s nationality or domicile, or an imbalance of size and resources between the parties.

Useful link

Case load of the UPC since start of operation in June 2023: dycip.com/upc-caseload-may2024

Case details at a glance

Decision level: Mannheim local division
Case: UPC_CFI_410/2023
Order/decision: ORD_13321/2024
Parties: Advanced Bionics AG & Ors v MED-EL Elektromedizinische Geräte Gesellschaft mbH
Date: 15 April 2024
Decision: dycip.com/advanced-bionics-med-el

Decision level: Court of Appeal, Luxembourg
Case: UPC_CoA_101/2024
Order/decision: ORD_18194/2024
Parties: Curio Bioscience Inc v 10x Genomics Inc
Date: 17 April 2024
Decision: dycip.com/curio-bioscience-10x