UPC and language: a transition towards English?

On 18 October 2023 the President of the UPC Local Division The Hague issued an interesting order allowing the switch of the language of the proceeding from Dutch to English.

Background of the case

An infringement action was brought before the UPC Local Division of The Hague. The applicant chose Dutch as the language of the proceedings. The defendant filed an application referring to R. 322 and to R 323 RoP asking to change the language of the proceeding from Dutch into English.

The applicant argued that:

i) being a Spanish start-up, the company had to bear considerable costs and therefore had a disproportionate and unnecessary financial burden to translate and participate in the proceedings in Dutch, whereas one of the purposes of the UPC system is to make European patent litigation affordable for small and medium-sized enterprises;

ii) the opposing party was an international company using English as its working language;

iii) English is the original language in which the patent was granted;

iv) the previous correspondence between the representatives of both parties was in English.

   

The Respondent replied that:

i) no disproportionate, unnecessary burden and disadvantage were to be suffered by the counterparty;

ii) the choice of Dutch language was obvious in the context of Dutch parties and representatives acting before the Dutch local division of the UPC;

iii) the position of the other party was fundamentally financial and mostly related to the translation costs which would not be disproportionate.

Lacking any agreement among the parties on the request, the Judge Rapporteur forwarded the application to the President of Court of First instance.

The decision

While the admissibility of the application was not formally challenged, the President of the Court noted that the aim of efficiency and the general obligation for the parties to set out their case as early as possible, the time limit set out in R. 323.1 RoP is to be understood as a time limit at the latest when lodging the statement of defence.

The President of the Court granted the application and ordered the change of the language of the proceeding into English, by referring to Art. 49 (5) UPCA that allows the use of the language in which the patent was granted and that the language of the proceeding can be decided on grounds of fairness and by considering all relevant circumstances. In this case both parties had a good command of English language, they exchanged prior correspondence in English and the use of English would not affect the position of the party claiming infringement. The decision to change the language of the proceeding does not require necessarily a disproportionate disadvantage for the party, but it is sufficient that language initially chosen by the applicant is significantly detrimental to the other party (e.g. preparatory discussions and work handled in English and submissions then to be translated).

The order can be appealed.

Comment

This decision constitutes an interesting precedent allowing defendants to ask a switch to English without needing to argue a disproportionate advantage.   As a practical takeaway, parties do not need to seek native language UPC representatives in local divisions and with English commonly used and understood in patent matters it may reduce the language constraints and transparency of UPC proceedings. Merpel wonders, though, if correspondence will start to be written in local languages to avoid that argument being raised again.