In this interesting decision (UPC_CoA_101/2024 ApL_ 12116/2024 10x Genomics, Inc vs. Curio Bioscience Inc), the Court of Appeal ordered that the Language of proceedings should be changed from German to English.

The Court of Appeal indicated that relevant circumstances should primarily be related to the specific case and the position of the parties, in particular the position of the defendant. If the outcome of balancing of interests is equal, the position of the defendant is the decisive factor. In particular, the Court of Appeal indicated that the language of the patent as language of proceedings cannot be unfair for the claimant.

Background

Generally, the language of proceedings is an official language of the contracting member state hosting the relevant division (Art. 49(1) UPCA) or a designated language of the European Patent Office.

According to Art.49(5) UPCA at request of one of the parties and after having heard the other parties and the competent panel, the President of the Court of First Instance may “on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant, decide on the use of the language in which the patent was granted as language of proceedings.”

The case relates to a request for provisional measures, which has been started before the Düsseldorf local division in German language. The patent at issue is written in English.

The defendant has requested a change of the language of the proceedings from German into English, which has been forwarded to the President of the Court of First Instance. The president of the Court of First Instance has rejected the request on February 26, 2024.

Curio Bioscience has lodged an appeal against this decision.

Decision of the Court of Appeal

In the decision, the Court of Appeal has acknowledged that the Court of First Instance has a margin of discretion when assessing fairness. However, in the present case, the order must be set aside.

The Court of Appeal clarifies how the requirements of Article 49(5) UPCA should be assessed. The relevant circumstances should be primarily related to the specific case and the position of the parties.

Relevant circumstances related to the specific case are for example:

• Language mostly used in the field of technology involved, and
• Language the evidence (including prior art) is primarily written in, which is of particular relevance.

Relevant circumstances related to the parties include:

• Nationality or domicile of the parties (this is not compensated by the fact that its representative is proficient in the language of the proceedings),
• Size of the parties relative to each other (a multinational company with a large legal department has more resources to deal with and coordinate international disputes than a small company), and
• How a change of language will affect the course of the proceedings, as it may lead to a delay and additional costs.

Circumstances that are generally not relevant are:

• Whether a representative has specific language skills,
• Nationality of the judges hearing a case, and
• 20% of EU citizens would speak German as native language and 10% as a foreign language.

The Court of Appeal further states clear that the position of the defendant is to be taken into account, and if the outcome of balancing of interests is equal, the position of the defendant is the decisive factor.

Further, the Court of Appeal explains that the language of the patent cannot be unfair in respect of the claimant. The Court of Appeal provides the following reasons for that conclusion:  a) the applicant has prosecuted the patent application in that language before the EPO, b) an acquirer must be prepared that this may be the language of proceedings before the EPO and c) the patent proprietor must also be prepared to litigate in that language, for example before the Central Division of the UPC.

The fact that both companies being US companies, the language of the underlying technology field is English, that the infringement evidence 10x Genomics relies on is almost exclusively in English, and that the majority of the evidence Curio Bioscience relies on for its defence is also in English, are, according to the Court of Appeal, relevant circumstances of considerable weight.

Further, the Court of Appeal considered that the disadvantage of the language of the proceedings being different from their company language is a heavier burden for Curio Bioscience than it is for 10x Genomics, in view of the difference of size between the companies.

The Court of Appeal concluded that the language of the patent, i.e. English, shall be used as the language of the proceedings.

Further, they decided that a change of language can also be ordered after the last oral hearing in the proceedings at the Court of First Instance.

In this case, as the rapporteur of the Court of First Instance has already started to draft a decision, the Court of Appeal indicated in a pragmatic approach that  the Court of First Instance may make any order and deliver any decision in the official language of the Contracting Member State – German – together with a certified translation. This is in line with Rule 14.2 (c) RoP.