Rule 323 – Application by one party to use the language in which the patent was granted as language of the proceedings

1. If a party wishes to use the language in which the patent was granted as language of the proceedings, in accordance with Article 49(5) of the Agreement, the party shall include such Application in the Statement of Claim, in the case of a claimant, or in the Statement of Defence, in the case of a defendant. The judge-rapporteur shall forward the Application to the President of the Court of First Instance.

2. The President shall invite the other party to indicate, within 10 days, its position on the use of the language in which the patent was granted as language of the proceedings.

3. The President, having consulted the panel of the division, may order that the language in which the patent was granted shall be the language of the proceedings and may make the order conditional on specific translation or interpretation arrangements.

Relation with Agreement: Article 49(5)

Case Law

Court of Appeal

IPPT20240417, UPC CoA, Curio Bioscience v 10x Genomics
Change of language of the proceedings into the language of the patent on grounds of fairness: all relevant circumstances shall be taken into account (Article 49 UPCA, Rule 323 RoP) These should primarily be related to the specific case and the position of the parties. If the outcome of balancing of interests is equal, the position of the defendant is the decisive factor. 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. 
 

Court of First Instance

IPPT20240415, UPC CFI, President, Advanced Bionics v MED-EL
No disproportionate disadvantage necessary. The decision whether or not to change the language of the proceedings into the language in which the patent was granted (Article 49 UPCA, Rule 323 RoP) shall be determined with regard to the respective interests at stake that has to be weighted, without it being necessary to constitute a disproportionate disadvantage. As a result, it may be sufficient that – amongst all relevant circumstances also to be considered – the language initially chosen is significantly detrimental to the Applicant. A fairness issue can occur if one party compared to the other(s), is remarkably disadvantaged by the conditions in which it has to organize its defence due to the language of the proceedings. Factors resulting from strategic choices made by the Applicants and the existence of multiple related proceedings pending before national courts is not obviously affecting the conditions under which the defence is exercised in the present action. Request to change language of proceedings can be filed within the time-limit to lodge the Statement of Defence.

IPPT20240226, UPC CFI, President, 10x Genomics v Curio Bioscience
Application to change the language of the proceedings between two US litigants from German to the language of the patent (English) not granted  (Article 49 UPCA, Rule 323 RoP). No detailed information or relevant data in support of the assertion that Applicant is entitled to classification as an “SME”. No particular circumstances by Applicant put forward that suffice to raise a fairness issue affecting possibility of organising efficiently its defence despite the timeframe of an application for provisional measures – which instead, may be undermined by the requested change – as both parties are equally confronted with a foreign language and the relating inconvenience in terms of translation and interpretation needs. Mere interest of the Court itself – although concurring with those of the users – cannot prevail in the event where none of the other circumstances of the case at hand call for the requested change.

IPPT20240116, UPC CFI, President, Aarke v Sodastream
Language of proceedings (German) changed to language of the patent (English) (article 49 UPCA, Rule 323 RoP). It may be sufficient that – amongst all relevant circumstances also to be considered – the language initially chosen is significantly detrimental to the Applicant (UPC CFI 225/2023 LD The Hague, order of 18 October 2023). The respective position of both parties is likely to create a significant imbalance in the way they can organise their defense and access to the Court although they are equally confronted with a foreign language they don’t use in their respective daily activities. Application in English to change the language of the proceedings (from German to English) accepted. Court to decide on case-by-case basis whether an application pursuant to R. 323 lodged in a different language is to be rejected or not. 

IPPT20231018, UPC CFI, President, Plant-e v Arkyne

Language of the proceedings changed from Dutch into English, the language in which the patent was granted (Article 49 UPCA, Rule 323 RoP). Both parties have a good command of English, which is one of their working languages and also the language in which the exchanges prior to the infringement action have been conducted. Consequently, the use of English would not affect the interests of the Respondents, who have already provided a translation of the statement of claim which was served on 10 August 2023. It follows from Art. 49 (5) UPCA that it may be sufficient that - amongst all relevant circumstances also to be considered - the language initially chosen is significantly detrimental to the Applicant.