Since the Unified Patent Court (UPC) opened its doors in June\u202f2023, parties have quickly tested Article 49 (5) UPCA and Rule 323 RoP, asking the Court to switch from a local language to the language of the patent \u2014 almost always English. Five select orders from the Court of First Instance from the past year illustrate what will, and what will not, tip the scale.<\/p>\n
This sample is small but diverse: two applications by Big Tech defendants (Ona Patents SL v. Apple, UPC_CFI_99\/2024, and Ona Patents SL v. Google, UPC_CFI_100\/2024) were refused and the appeal thrown out, due to closure of the written procedure; two requests in multinational supply\u2011chain disputes (Maxeon v. Aiko, UPC_CFI_336\/2024, and InterDigital v. Disney, UPC_CFI_292\/2025) were granted; and one medical\u2011device fight (MED\u2011EL v. Advanced\u202fBionics, UPC_CFI_410\/2023) ended in a refusal. All five were decided by President of the Court of First Instance, Florence Butin, as set forth by Art. 49 (5) UPCA, ensuring doctrinal consistency while revealing how finely the balancing exercise is calibrated.<\/p>\n
\u2022 Language of the patent and prior art
\nThe Court starts from the text of Article 49 (5) UPCA: using the grant language promotes technical accuracy. In every granted order the patent itself and most exhibits were already in English, so switching avoided duplication and mistranslation.<\/p>\n
\u2022 Working language of both sides
\nWhere claimant and defendant already negotiate, draft and contract in English, the Court sees little fairness in forcing one party to defend itself in German. This was evident in InterDigital v. Disney and Maxeon v. Aiko, where all corporate decision\u2011makers operated in English.<\/p>\n
\u2022 Cross\u2011border coordination needs
\nMulti\u2011defendant cases spanning several EU states persuade the Court that a single \u201cneutral\u201d procedural language reduces cost and delay. The Mannheim order in InterDigital v. Disney underlined the logistical burden for the defendant (Disney) of translating pleadings for ten U.S. and Dutch entities.<\/p>\n
\u2022 Dead\u2011heat \u2192 defendant wins
\nEchoing the Court of Appeal in 10x Genomics v. Curio (UPC_CoA_101\/2024, ApL_12116\/2024), President Butin treats the defendant\u2019s preference as decisive when the overall balance of interests is otherwise even, referring to Art. 49 (5) UPCA, which states that the President of the Court of First Instance decides “on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant”. This tie\u2011breaker tipped the scale in Maxeon v. Aiko, even warranting a headnote (No. 2) to this order.<\/p>\n
\u2022 “We are a global giant, so English is easier.”
\nApple and Google invoked the lingua franca of their headquarters, but the Court refused to magnify an already dominant party\u2019s convenience at the expense of a start\u2011up claimant that had prepared its German case months in advance.<\/p>\n
\u2022 Parallel proceedings chosen by the applicant
\nAdvanced\u202fBionics relied on a pending English\u2011language revocation action it had itself filed in Paris. The Court called that a strategic choice and refused to let it dictate the language of infringement proceedings in Mannheim, as keeping German is “not obviously affecting the conditions under which the defence is exercised in the present action”.<\/p>\n
\u2022 Presence of English\u2011speaking lawyers
\nThe Court repeatedly stressed that counsel\u2019s language skills cannot cure the disadvantage faced by the client\u2019s internal teams or senior management (for instance in the 2nd headnote to Maxeon v. Aiko).<\/p>\n
\u2022 Generic cost\u2011savings claims
\nParties must show concrete prejudice, not just \u201ctranslation costs.\u201d Without evidence of real delay or risk, the Court treats such costs as the ordinary price of litigation.<\/p>\n
\u2022 Relative size and resources
\nWhen the claimant was a scale\u2011up (Ona Patents) and the defendant a blue\u2011chip behemoth (Google and Apple respectively), the Court emphasised the power imbalance and kept German as the forum language. In Maxeon v. Aiko, by contrast, two multinationals of comparable heft neutralised this factor.<\/p>\n
\u2022 Location of defendants
\nThe presence of several German entities did not block a switch in Maxeon v. Aiko \u2014 because key technical staff sat in China and communication ran in English. Yet in MED\u2011EL v. Advanced\u202fBionics, two German\u2011speaking defendants were enough to keep German as the language of proceedings.<\/p>\n
\u2022 Timing and formality
\nAll five orders confirm that an application filed even before the Statement of Defence, or through the CMS \u2018generic application\u2019 channel, is procedurally admissible. Nevertheless, Apple and Google were criticised for waiting until ten weeks after service, feeding the perception of tactical delay.<\/p>\n
\u2022 Management\u2011level comprehension
\nThe D\u00fcsseldorf order in Maxeon v. Aiko (2nd headnote) gave weight to the fact that none of the Aiko group\u2019s senior legal managers spoke German, whereas Maxeon\u2019s chief legal officer was an English speaker (echoing the CofA in 10x Genomics v. Curio once again). The Mannheim order in MED\u2011EL v. Advanced\u202fBionics found no comparable mismatch and so discounted the point.<\/p>\n
\u2714 File early \u2014 ideally with or shortly after your appearance \u2014 and explain why refraining from a language change will hamper your defence under the tight UPC calendar.<\/p>\n
\u2714 Prove that decision\u2011makers on both sides already operate in English or another suitable language.<\/p>\n
\u2714 Show that exhibits, prior art and parallel EPO or national files are predominantly in English or another suitable language.<\/p>\n
\u2716 Don\u2019t rely on your own size, your counsel\u2019s fluency, or proceedings you chose to start elsewhere.<\/p>\n
While dominant, English has no automatic primacy at the UPC. A request under Rule 323 succeeds only when it serves fairness, measured case\u2011by\u2011case: does the existing language place a meaningful burden on the applicant, and will the switch harm the other side? If the balance is even, the defendant gets the benefit. Until that calculus changes, litigants should prepare their narratives \u2014 and their evidence \u2014 accordingly.<\/p>","protected":false},"excerpt":{"rendered":"
Lessons from five language\u2011change orders (2024\u20112025) Since the Unified Patent Court (UPC) opened its doors in June\u202f2023, parties have quickly tested Article 49 (5) UPCA and Rule 323 RoP, asking the Court to switch from a local language to the…<\/p>","protected":false},"author":3,"featured_media":40859,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":"","_links_to":"","_links_to_target":""},"categories":[64],"tags":[],"legal_areas":[224],"class_list":["post-40812","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-upc-update-en","legal_areas-patents-and-utility-models"],"acf":[],"yoast_head":"\n