Case Law
Article 49: Language of proceedings at the Court of First Instance

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 for a language change: "The complaint would, in any case, be unfounded because Art. 49(5) UPCA does not require the application for a language change to be included in the Statement of defence."

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 18/06/2024, Apple GmbH, Apple Distribution International Ltd., Apple Retail Germany B.V. & Co. KG, Apple Retail France EURL (Case/ Registry number: App_26610/2024, ORD_27452/2024)
Example of decision on the rejection of a request to change the language of proceedings: "In the same decision, the CofA also held that “for a claimant, having had the choice of language of the patent, with the ensuing possibility that the claimant/patentee may have to conduct legal proceedings in that language, 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” (para. 34).
It appears from these circumstances that Ona Patents had relevant reasons to file its infringement action in German although the language of the patent and relating technology is English, namely the language skills of the contact person likely to follow-up the proceedings on its behalf, the location of the registered offices of two defendants and the existence of parallel proceedings handled in German with limited resources compared to those of Apple.
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."

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: “A question addressed in previous applications is whether the position of the defendant must be decisive in this overall assessment, in the event that the result of the balancing of interests is the same. In this respect, the CofA found that the emphasis given “in particular” to the position of the defendant under Art. 49 (5) UPCA is justified by the flexibility afforded to the claimant which frequently has the choice of where to file its action – since any local or regional division in which an infringement is actually threatened or taking place is competent – and can choose the most convenient timeframe to draft its statement of claim while the defendant is directly bound by strict deadlines.
Based on the above – while considering that the claimant may also be in a critical situation and obligated to respond promptly for economic reasons – it follows that the position of the defendant (s) prevails in the event that both parties are in a comparable situation.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 16/01/2024, Aarke AB v. Sodastream Industries Ltd (Case number UPC_CFI_373/2023, ORD_592147/2023)
Example of decision about the language of the 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.”

Court of First Instance - Munich (DE) Local Division, Order dated 03/11/2023, Amgen, Inc. v. Sanofi-Aventis Deutschland GmbH (Case number UPC_CFI_14/2023, ORD_584907/2023)
Example of decision changing the language of proceedings: “Pursuant to Rule 322 R, the Judge-Rapporteur may, of his own motion or at the request of a party, at any time during the written and interlocutory proceedings, after consultation with the panel, propose to the parties that the language of the proceedings be changed to the language in which the patent was granted in accordance with Article 49(4) of the Convention. If the parties and the panel agree, the language of the proceedings shall be changed. In view of the agreement of both parties and the other members of the panel, the language of the proceedings should be changed.”

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.”