The president of the UPC local division The Hague has allowed to change the language of the proceedings from Dutch to English in an infringement action of Plant-e Knowledge and Plant-e against Arkyne Technologies, because ‘the language initially chosen [was] significantly detrimental to the Applicant’.
The order of president Florence Butin was issued on 18 October 2023.
In an application dated 21 September 2023, Arkyne, referring to both R. 322 and R. 323 of the Rules of Procedure (RoP), asked for a change of the language of the proceedings from Dutch into English as the language in which the patent had been granted. Plant-e Knowledge and Plant-e (claimants in the main proceedings) replied that there was no reason to change the language of the proceedings in written comments submitted on 13 October 2023.
Admissibility
The UPC first looked at the admissibility of the application, particularly in view of the text of 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 Defense, in the case of a defendant.’
But according to the president of the court: ‘As R. 323 RoP refers to Art. 49 (5) UPCA abovementioned which (…) 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 (…).’
Also, she stated: ‘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.’
Arkyne contended it is a small Spanish company being still in the start-up phase and forced to incur considerable translation costs which causes disproportionate and unnecessary financial burden whereas one of the purposes of the UPC system is to make European patent litigation affordable for small and medium-sized enterprises
Merits of the application
As to the merits of the application, Arkyne contended it is a small Spanish company being still in the start-up phase and forced to incur considerable translation costs which causes disproportionate and unnecessary financial burden whereas one of the purposes of the UPC system is to make European patent litigation affordable for small and medium-sized enterprises. ‘He states that the requested change is in contrast not objectionable to the Respondents, being together an international company that uses English as working language. He also argues that the original language in which the patent was granted is the primary source of the legal discussion including the grant file. Finally the Applicant refers to previous correspondence between the representatives of both parties and most recent summons being all written in English, and states that the reasons given by the claimants in the main proceedings – here the Respondents – for not translating their productions in Dutch are all valid and therefore support the Application.’
Plant-e Knowledge and Plant-e argued that ‘the inconvenience raised by the Applicant is neither disproportionate nor disadvantageous with regard to the low translation costs and the possibility to use the Dutch language for the oral hearings without interpretation needs.’
Order
The president of the UPC concludes that ‘it is not disputed that both parties have a good command of English (…). Consequently, the use of English would not affect the interests of the Respondents (…).
the decision to change or not to change the language of the proceedings into the language in which the patent was granted shall be determined with regards to the respective interest at stake without it being necessary to constitute a disproportionate disadvantage
Furthermore, it follows from Art. 49 (5) UPCA that the decision to change or not to change the language of the proceedings into the language in which the patent was granted shall be determined with regards to the respective interest 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.
In that regard, 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. (…) In addition, it has to be taken into consideration that the Respondents did not put forward a particular justification for not agreeing to the requested change. (…)
FOR THESE GROUNDS, It is ordered that: 1 – The application shall be granted and the language of the proceedings changed into the language in which the patent at issue has been granted, namely English. 2 – The present order shall not be conditional on specific translation or interpretation arrangements. 3 – The costs incurred by the Applicant shall be dealt with in the main proceedings. (…)’
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The change of language at the local panel in The Hague has already be commented in another blog.
With respect to the language of proceedings before the UPC, it has to be kept in mind that in procedures before the UPC, contrary to procedures before the EPO, the court does not provide simultaneous interpretation. Only costs for simultaneous interpretation for the benefit of the panel shall be borne by the court.
According to R 109.5 UPCA, “Costs for simultaneous interpretation are costs of the proceedings to be decided upon under Rule 150 except where a party engages an interpreter at its own expense under paragraph 4; these costs are borne solely by that party”.
Costs for simultaneous interpretation are anything but cheap and can thus be a burden for the losing party in spite of ceilings for recoverable costs. A party will most probably never provide an interpreter at its own expense as it will have to bear the costs without any chance of recovering the corresponding costs.
If the patent has been granted in a language other than English, the necessity of simultaneous interpretation will inevitably arise. Even if the parties agree on English and the panel approves, the costs will have to be borne by the losing party.
This is one of the hidden niceties of the UPC. It has never been made clear to the various parliaments when they decided to ratify the UPCA as the rules of procedure did not exist at the time. Art 49(5) UPCA only mentions the possibility to use as language of the proceedings, the language in which the patent has been granted.
A question will inevitably occur: if during proceedings before the UPC, a representative did not request simultaneous interpretation and accepted for instance to discuss the case in English, even if the language in which the patent is granted is not English, is the EPO then prepared to give for free simultaneous interpretation in case of procedures on the same patent at the EPO?
the questions here are getting more and more ridiculous: why should the EPO even look to the procedure before the UPC? EPO people don‘t even know how and where to look into that procedure, and will never bother to do that!
You might not realise, but the costs for simultaneous translations are extremely high. Unnecessary translation costs can amount to up to millions € a year.
EPO people are not as stupid as you think or you would like. If there are ways of saving on interpretation costs, the Office will use them.
I invite you to look at a few decisions of the boards in matters of simultaneous translations. In T 418/07 the board refused to provide translation merely to suit the convenience of a party. The same applies to T 131/07 or T 2696/16. In T 2422/10, interpretation from German into the language of the proceedings (English) for the English-speaking German representative was refused by the board.
When you see parties having requested simultaneous translation and either not wearing the headphones or accepting to continue the OP once the interpreters a have left (in general at 18:00), then interpretation costs were spent in vain. Why sould the EPO have to pay for those costs?
There is thus nothing ridiculous to think about reducing the costs for simultaneous interpretation, if the EPO becomes aware that simultaneous interpretation has not been requested at the UPC in order for a party to save costs. What is possible for a party should be possible for the EPO.
either those costs are unjustified by them selves and then should be avoided in many cases independently from any imaginary link to other procedures or are justified and necessary and then should be maintained no matter what happens somewhere else, this is the only way of properly and correctly establishing procedural lawfulness
‘the language initially chosen [was] significantly detrimental to the Applicant’
But wouldn’t that have been the entire point of selecting that language in the first place? Is it not common in litigation to see the party with the deeper pockets adopting tactics that are either solely or principally aimed at (financially) inconveniencing the other side?
We shall have to wait and see how, over time, the UPC responds to instances where parties take advantage of the numerous opportunities offered by the UPCA and its Rules to engage in “resource-depleting” tactics. Whilst the order of 18 October might be a positive development, it is hard to see how those UPC defendants with relatively shallow pockets can possibly prevent the other side from selecting a “detrimental” language in the first place (and hence how they can possibly avoid the costs involved with obtaining an order to change the language).
“It has never been made clear to the various parliaments when they decided to ratify the UPCA as the rules of procedure did not exist at the time.”
Some countries like Belgium ratified the UPC without knowing how much it would cost (court fees were decided in 2016, Belgium ratified in 2014). It’s like “buying a cat in bag”.