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

IPPT20251201, UPC CoA, Innovative Sonic v Oppo

Appeal to change the language back to German dismissed. (Article 49(5) UPCA, R. 323.3 RoP.) A party must be able to fully understand what is submitted by a representative on its behalf and what is submitted by the other party. It follows that, if the language of the proceedings is not the language of a party, this is not compensated by the fact that its representative is proficient in the language of the proceedings. The party itself is then still dependent on translations of the statements and evidence lodged on either side. It cannot be accepted that machine translations, even if not always accurate, are sufficient for this purpose. The Court of Appeal has consulted the panel of the Local Division by way of analogy with R. 323.3 RoP. If there has already been a change in the language of the proceedings at an early stage, it is prudent not to change the language again.

IPPT20240905, UPC CoA, Advanced Bionics v Med-EL - I
President rightly rejected request for a language change. The fact that the claimant and two of the three defendants are domiciled in countries where German is an official languageis an important factor in the decision on an application to use the language of the patent as the language of the proceedings (Art. 49(5) UPCA, R. 323.3 RoP). Application for change of language does not have to be included in the Statement of defence. The lodging of the application before the Statement of defence is not precluded.

IPPT20240918, UPC CoA, Apple v Ona
On grounds of fairness to defendant Apple the language of the proceedings is changed from German to English, the language in which the patent was granted (Article 49(5) UPCA). In addition to the circumstances stated by the Court of Appeal in its order of 17 April 2024 [Curio Bioscience v 10x Genomics] the internal working language of the parties, the possibility of internal coordination and of support on technical issues are relevant circumstances.

IPPT20250508, UPC CoA, Hybridgenerator v HGSystem
Change of language in appeal of limited scope from Danish to English with the agreement of the parties (Article 49(4) UPCA, R. 322 RoP). No translation of pleadings and evidence 

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

IPPT20260320, UPC CFI, President, HyGear v Topsoe

Language of proceedings changed from German to English by party consent (Article 49 (5) UPCA, Rule 323.1. RoP). 

IPPT20260217, UPC CFI, President, Xiaomi v Malikie

Language of proceedings changed from German to English for reasons of fairness. (Article 49 (5) UPCA , Rule 323 RoP). The need for strategic coordination and technical support in a common working language is a decisive factor in the balancing of all interests. Taking into account that the language primarily chosen is not only a financial burden, but also a disadvantage in view of strict time limits that must be met in UPC proceedings.

IPPT20260126, UPC CFI, President, Nordmeccanica v Bobst Manchester
Language of proceedings changed to language of the patent , namely English. (Article 49 UPCA , Rule 323 RoP).  On the grounds of fairness, all relevant circumstances – in particular those related to the case and the respective position of the parties – shall be considered. If the outcome of balancing of interest is equal, the position of the defendant is the decisive factor.  (Art. 49 (5) UPCA) 

IPPT20260126, UPC CFI, President, Amazon v InterDigital
Change of language of proceedings from German to English granted. (Art. 49 UPCA , Rule. 323 RoP) . No substantiation of any circumstances which could justify not changing the language of the present proceedings. Order not conditional on specific translation or interpretation arrangements (not requested).

IPPT20251223, UPC CFI, CD Paris, Bosch v. Valeo
Jurisdiction and competence of the court. (Article 33 UPCA).  Language of proceedings changed to English (Article 49 UPCA, Rule 323 RoP).

IPPT20260120, UPC CFI, President, Pinterest v Nagravision
Change of language of the proceedings into the language of the patent (English) allowed.  (Art. 49 (5) UPCA ,Rule. 323 RoP) . The need of several Defendants to communicate and coordinate the dispute should be given due consideration in addition to domiciliation of the parties. The drawback of speed and efficiency being affected if proceedings are not conducted in the usual working language,  is of particular importance in identifying a fairness issue considering the strict time limits set by the rules of procedure. 

IPPT20250918, UPC CFI, President, Oppo v Crystal Clear Codec
Language of the proceedings changed to the language in which the patent was granted, namely English with the consent of both parties. (Article 49(5) UPCA, R. 323 RoP) 

IPPT20250912, UPC CFI , President, HMD Global v Huawei
Language of the proceedings changed to the language of the patent (English) (Article 49 (5) UPCA & R. 323(1) RoP). The nationality of the judges composing the panel is in principle not a relevant factor either, especially in the context of the requested change from German to English which is used by all UPC judges to communicate among themselves. In the event that the balance of interests is equal, the interests of the defendants will prevail.

IPPT20250908, UPC CFI, President, Global Oy v FraunHofer
Language of the proceedings shall be changed to the language in which the patent was granted, namely English (Article 49(5) UPCA, R. 323 RoP). Due consideration must also be given to the need for such entities to coordinate and communicate internally in view of their defence. This strategic coordination is necessarily affected if the proceedings are not conducted in their usual working language. 

IPPT20250905, UPC CFI, President, Renault v Avago
Language of the proceedings changed to the language in which the patent was granted, namely English Article 49(5) UPCA and R. 323 RoP). In the absence of any objections raised by the Claimant in the main proceedings and given the position of the Defendants, the Court expressly refers to the reasoning developed in the aforementioned order: IPPT20250703, UPC CFI, President, Avago v Renault

IPPT20250818, UPC CFI, President, OPPO v Innovative Sonic
Language of the proceedings at the request of defendants changed from German to English, the language in which the patent was granted (R. 323 RoP, Article 49(5) UPCA). For the judge rapporteur to decide whether the oral hearing may be held in German as an alternative. Considering the additional work and potential difficulties incurred by continuing with the case management in English and preparing for the oral phase in another language, this possibility should preferably be discussed with the Judge-rapporteur rather than being decided at this stage. 

IPPT20250812, UPC CFI, LD Düsseldorf, Headwater Research v Samsung 
At the request of both parties, the language of the proceedings will be changed from German to English, the language of the patent ((Article 49(3) UPCA, R. 321 RoP).

IPPT20250709, UPC CFI, President, Interdigital v Disney 
Language of the proceedings changed to the language in which the patent was granted, namely English (Article 49(5) UPCA and R. 323 RoP)..
 

IPPT20250703, UPC CFI, President, Avago v Renault
Language of the proceedings changed to the language in which the patent was granted, namely English (Article 49(5) UPCA, R. 323 RoP). When deciding on an application to change the language of the proceedings to the language in which the patent was granted for reasons of fairness, while all relevant circumstances must be taken into account, the arguments referring to the conditions in which the final decision may be enforced in the territory where the alleged infringement occurred are of less relevance in the overall assessment and balancing of interests, as they relate to the outcome of the trial – which cannot be anticipated – and not to the respective situation of the parties during the proceeding.

IPPT20250618, UPC CFI, President, Interdigital v Disney
Language of the proceedings changed to the language in which the patent was granted, namely English (Article 49(5) UPCA and R. 323 RoP).

IPPT20250530, UPC CFI, LD Mannheim, Sunstar v Ceracon
Claimant has validly chosen English as the language of the proceedings (Article 49(2) UPCA). By filing its statement of claim in English and designating English as the language of the proceedings pursuant to Art. 49 (2) UPCA in its statement of claim, under the section on formalities, Claimant has chosen English as the language of the proceedings. The choice is valid. English is the language of the patent-in-suit.

IPPT20250502, UPC CFI, President, Interdigital v Disney

IPPT20250430, UPC CFI, President, Interdigital v Disney

Language of the proceedings changed from German to English, the language in which the patent was granted (Article 49(3) UPCA, R. 14 RoP, R. 323 RoP)

IPPT20250116, UPC CFI President, BF exaQC v NVIDIA
Application to change the language of the proceedings from German to English dismissed (Article 49 (5) UPCA, R. 323 RoP). Given its financial resources and logistical support, NVIDIA has the capacity and means to conduct proceedings in a foreign language – especially since this applies to only one of the Defendant – without significant inconvenience. 

IPPT20250109, UPC CFI, President, ArcelorMittal v XPENG
Change of language of the proceedings from French to English (language of the patent) (R. 323 RoP). Preliminary objection concerning the language of the Statement of claim (R. 19.1(c) RoP) only possible based on Article 49(1) (2) UPCA. In contrast, R. 323 permits a change in the language of the proceedings as initially selected by the Claimant, as provided under Art. 49 (4) UPCA based “on grounds of convenience and fairness” which are invoked by the Applicants in the present case. As expressly agreed by ArcelorMittal in its written comments on the Application, the language of the proceedings will be changed to the language in which the patent at issue was granted – namely English. Statement of claim to be translated by claimant. Parties to agree on a list of the annexes that should be provided in English

IPPT20240823, UPC CFI, President, Maxeon Solar v Aiko Energy 
Change of language from German to English (the language of the patent) granted (Article 49 UPCA). English language application to change the language of the proceedings from German to English declared admissible (Rule 7.1 RoP, Rule 14.4 RoP, Rule 323 RoP). According to R. 7.1 RoP, it is within the Court’s discretion to decide on a case-by-case basis whether an application lodged in a different language under R. 323 RoP should be rejected. If both parties are in a comparable situation, the position of the defendant (s) is the decisive factor. It appears that changing the language of the proceedings would greatly facilitate the coordination among the Defendants – especially those that are not German entities – while not posing any detriment to the Claimant which operates and communicates in English. 

IPPT20240712, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce
Inappropriate to order simultaneous translation into English in this case. (Article 49 UPCA, Rule 109 RoP, Rule 14 RoP). Costs of ordered translation are procedural costs which the other party may have to bear depending on the outcome of the proceedings. Plaintiff was free to decide in favour of conducting the proceedings in English when the action was filed.Plaintiff authorized to hire an interpreter at its own expense.

IPPT20240618, UPC CFI, President, Apple v Ona
Application to change the language of the proceedings to the language in which the patent at issue has been granted dismissed (Article 49 UPCA, Rule 323 RoP). It results in substance from the above that the requested change would represent a significant drawback for the Claimant, while being in contrast a slight advantage in favor of the Defendants. 

IPPT20240612, UPC CFI, President, Samsung v Headwater
Change of language (unobjected) of the proceedings from German to English (Article 49(5) UPCA, Rule 323 RoP). In the absence of objection from Headwater Research LLC., the language of the proceedings shall be changed to the language in which the patent at issue has been granted - namely English. It is to be noted that the Applicants did not request that existing pleadings and other documents should be translated. 

IPPT20240530, UPC CFI, President, Samsung v Headwater
Change of language of the proceedings from German to English in proceedings between Samsung and American company Headwater (Article 49(5) UPCA, Rule 323 RoP). While considering that the claimant may also be in a critical situation and obligated to respond promptly for economic reasons, [...] the position of the defendant (s) prevails in the event that both parties are in a comparable situation. […]. Samsung needs to organise its defence in English;  adopting the language in which the patent was granted does not result in any inconvenience for Headwater Research LLC. which uses English in its communications and preparatory work on the case, as do the Defendants. 

IPPT20240506, UPC CFI, LD Paris, Photon Wave v Seoul Viosys
No change of language of proceedings from French to the language of the patent (English) (Rule 322 RoP, Article 49 UPCA). Even though the European patent at issue was granted in English, the plaintiff, a Korean company, chose to bring its action in French, thereby respecting the rights of the defendant, a French company established in France. Neither the nationality of the representative of one of the parties, nor the nationality of the intervening company, constitute serious grounds for proposing a change in the language of the proceedings for reasons of convenience or fairness.

IPPT20240429, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Change of language of the proceedings to the language in which the the patent was granted as agreed by the parties approved by the Court. (Article 49(3) RoP, Rule 321(1) RoP) 

IPPT20240423, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
By way of exception the order of 30 April 2024 will be in German, accompanied by a certified English translation. (Article 49 UPCA, Rule 14(2)(c) RoP, Rule 118(8) RoP) After change of the language of the proceedings into English by the Court of Appeal at 17 April 2024, exceptional use is made of the possibility for German Local Divisions to issue and deliver an order in German together with a certified translation in order to make effective use of preparatory work and not to delay the proceedings unnecessarily.

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.

IPPT20240227, UPC CFI, LD Paris, Seoul Viosys v Laser Components
No change of language of proceedings from French to the language of the patent (English) rejected (Rule 322 RoP, Article 49 UPCA). The plaintiff, a Korean company, chose to bring its action in French, which is respectful of the rights of the defendant, a French company established in France. Neither the nationality of the representative of one of the parties, nor the nationality of the company intervening in the proceedings, which it has not been proven at this stage will participate in the proceedings, constitute serious grounds, either for reasons of convenience or for reasons of fairness, for proposing a change in the language of proceedings to the parties. 

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. 

IPPT20231103, UPC CFI, LD Munich, Amgen v Sanofi-Aventis

Change of the language of the proceedings from German to English, the language of the patent, subject to the agreement of both parties and the other members of the panel (Rule 322 RoP, article 49 UPCA).

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.