UPC: The Hague Local Division on change of language

In an order dated 18 October 2023, The Hague Local Division of the UPC ordered that the language of the proceedings (Dutch) be changed to the language in which the patent at issue was granted, namely English (ord. 581189/23 – UPC_CFI 239/2023, Plant-e Knowledge B.V. vs Arkyne Technologies SL).

The company applying for the change (the “Applicant”) was a Spanish company and the defendant in infringement proceedings brought against them by two Dutch companies (the “Respondents” in respect of the application to change the language). Upon being served with the Statement of Claims in Dutch, the Applicant, before filing its Statement of Defence, filed the application to change the language to English, being the language in which the patent was granted. It contended that it was a small Spanish start-up where Dutch was not spoken, and for which the translation costs would cause disproportionate and unnecessary financial burden, whereas the requested change of language could be easily accommodated by the Respondent since they are international companies using English as their working language.

In the absence of an agreement between the parties in respect of this change, the order was based on the following provisions:

-       Art. 49(5) UPCA: “at the 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”;

-       R. 323.1 RoP “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”.

The President of the Court thus granted the application based on the following reasons:

i)        R. 323.1 RoP sets a time limit for the applicant to ask for a change of the language of the proceedings: this request must be made, at the latest, when lodging the statement of defence, but this does not preclude that the application can be lodged before the statement of defence;

ii)      it was not disputed that both parties had a good command of English, which was one of their working languages and also the language in which the exchanges, prior to the infringement action, had been conducted. Consequently, the use of English would not affect the interests of the Respondent;

iii)     “being sued before the Court in a language that they do not master is an important inconvenience for the Applicant even if being assisted by Dutch representatives. It indeed implies that all the preparatory discussions and work are handled in English whereas the whole submissions have to be translated, which represents considerable time and costs even if facilitating solutions can be used”.

[For an overview of unitary patents and UPC, find our posts here on this blog and our podcast here on Spotify]