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

Court of Appeal - Luxembourg (LU), Order dated 05/09/2024, Advanced Bionics GmbH, Advanced Bionics Sarl , Advanced Bionics AG v. MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. (Case/ Registry number: APL_24598/2024, ORD_42779/2024)
Example of decision on the application by one party to use the language in which the patent was granted as language of the proceedings: "Against this background, R. 323.3 must be interpreted in such a manner that it does not preclude the lodging of the application before the Statement of defence. Lodging the application before the Statement of defence is generally even more expedient, since it ensures that, if the application is successful, the language change can be implemented at an early stage of the proceedings."

Court of First Instance - Düsseldorf (DE), Order dated 30/05/2024, Samsung Electronics Co. Ltd. (Case/ Registry number: App_22744/2024, ORD_25299/2024)
Example of decision on the grant of a request to change the language of proceedings: “Regarding the consequences of the “local” language initially chosen towards the Samsung companies involved, the Applicants argue that the distribution entity located in Germany cannot provide support on technical points, and that other companies within the group are also being sued by Headwater Research LLC. in the US which implies a need for coordination. Considering the latter, the existence of other parallel proceedings conducted before the Munich Regional court against Defendants 1) and 4) appears irrelevant, as each party is confronted with similar issues stemming from these ongoing disputes.
According to Headwater Research LLC., the use of the language in which the patent was granted would not lead to efficiency gains, but instead would affect the conditions under which the case is handled by the Court. Nevertheless, their arguments concerning the official languages of the Contracting Member States hosting a division fail to mention that English – broadly used in most of these countries – is the sole available language to the Nordic-Baltic RD, and that the language of the patent as indicated in the abovementioned order dated 17 April 2024, remains a significant factor especially before the UPC, as it is one of the three languages used by the central division. It is moreover obvious – and not disputed here – that due the technology at issue, most, if not all, prior art documents and relevant literature will be in English”

Court of First Instance - Mannheim (DE) Local Division, Order dated 15/04/2024, Advanced Bionics GmbH, Advanced Bionics AG, Advanced Bionics Sarl (Registry number: App_12139/2024 ORD_13321/2024)
Example of decision on admissibility of a procedural application to change the language of proceedings: “In support of the Application, Advanced Bionics AG puts forward two main sets of arguments first relating to several parallel proceedings in course – including the revocation action conducted in English, with the need to get a common understanding of the patent in suit – that shall all be followed and coordinated centrally, and next, regarding the involvement of an English patent attorney as member of their team.
These factors however, result from strategical choices made by the Applicants and the existence of multiple related proceedings pending before national courts, although influencing the general management of these cases and the internal framework on the legal issues, is not obviously affecting the conditions under which the defence is exercised in the present action.
It is furthermore to be noted that two of the defendants have their seat located in Germany and Switzerland respectively, where German is an official language, while the third one is an affiliated entity so that the access to the content of the file and subsequent exchanges are eased.”
“Lastly none of the Applicants has invoked an imbalance of financial resources or any particular circumstance of the case likely to create a significant disadvantage to their detriment. They instead substantiate the inconvenience and costs incurred in the event of parallel related proceedings in different languages, which is not sufficient to allow the requested change pursuant to R. 323 RoP.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 26/02/2024, Curio Bioscience Inc. v. Genomics, Inc. (Case number UPC_CFI_463/2023 ORD_5853/2024)
Example of decision on the request to change the language of proceedings: “It follows from art. 49 (5) UPCA that the decision whether or not to change the language of the proceedings into the language in which the patent was granted shall be determined with regard to the respective interests at stake 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 (UPC CFI 225/2023 LD The Hague, order of 18 October 2023, UPC CFI 373/2023 LD Düsseldorf, order of 16 January 2024).”
“As regards the other aspects of the proceedings addressed by the Applicant, Curio Bioscience Inc. fails to put forward any particular circumstances of the case which would suffice to raise a fairness issue affecting the 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.
Lastly even if the use of English is in principle advantageous as facilitating the general organisation of judicial activities at both first instance and appeal levels, this 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.”

Court of First Instance - The Hague (NL) Local Division, Order dated 18/10/2023, Plant-e Knowledge B.V., Plant-e B.V. v. Arkyne Technologies S.L. (Case number UPC_CFI_239/2023, ORD_581189/2023)
Example of decision to change the language of the procedure: “As R. 323 RoP refers to Art. 49 (5) UPCA abovementioned which – as well as for the case of the initiative coming from both parties, one party or the judge-rapporteur addressed in Art. 49 (3) and (4) UPCA – does not specify any timeframe for such request possibly made “at any time during the written procedure”, it shall not be interpreted as precluding that an application to use the language in which the patent was granted can be lodged before the statement of defense is lodged in accordance with Rule 23 RoP.
Besides its lack of relevance with regard to the whole legal frame constituted by Art. 49 UPCA and R. 321 to 323, such interpretation would in addition be counter to the general aims as mentioned in the Preamble of the RoP which provide in particular in Point 4 that “Flexibility shall be ensured by applying all procedural rules in a flexible and balanced manner with the required level of discretion for the judges to organize the proceedings in the most efficient and cost effective manner” considering indeed that the obligation for the defendant to apply for a language change at the occasion of the statement of defense is likely to slow down the course of the proceedings.”