EP 1 993 350 B1 relates to gene modified brown mushrooms for commercial production. Specific strains were deposited under various ATCC Accession Numbers.
Brief outline of the case
Following opposition before the EPO by two companies, the patent was maintained in amended form. The OD’s decision was not appealed.
The proprietor started an infringement action against a natural Polish person.
The defendant requested for the hearing simultaneous interpretation from English, the language of the proceedings into Polish.
The judge rapporteur (JR) allowed simultaneous interpretation, but at the cost of the defendant.
The reasons brought forward by the defendant
The defendant is a natural person and he believes his command of English would be insufficient to confer all the information that he wishes to submit. Without the interpretation the defendant might also face difficulties following the oral submissions of both parties’ representatives. Providing for interpretation during the oral hearing will ensure quicker case proceedings.
The defendant is not a lawyer or a patent attorney. His professional activity is solely related to mushrooms. The defendant is not a big enterprise, he does not have an in-house counsel. Nevertheless, he would like to take part in the oral hearing, as the matter at hand is of high importance, and numerous substantive questions, related to mushrooms production, might appear during the oral hearing.
According to Art 53(1)(a) UPCA hearing the parties is one of the means giving evidence, and thus it is in the interest of the fair proceedings to allow the defendant to give his testimony in Polish, with interpretation into English. Finally, the domicile of the defendant is Poland, and English is not the official language of Poland.
The proprietor’s position
The proprietor has provided the defendant with a translation of the application for provisional measures in Polish with the service of the application for infringement.
The proprietor requested that the court dismiss the Application for the following reasons:
- in case the Application is granted, the costs of interpretation will become costs of the proceedings within the meaning of RoP 150 UPC pursuant to RoP 109.5 UPC, which will possibly put an additional cost-burden on the proprietor;
- the proprietor will not use the interpretation;
- the defendant chose to be active in European countries outside Poland including on the territory of Contracting Member States of the UPC;
- the commercial business language is English, also used by defendant as such;
- the defendant expressed doubts whether his command of English would be sufficient to follow the hearing, but did not state that he has no command of English at all;
- the defendant’s language concerns can be addressed equally well by engaging an interpreter at his own expense in consultation with the Registry, cf. RoP 109.4 UPC.
The decision of the JR
The JR considered that it must judge if and to what extent the RoP 109.1 UPC-request for simultaneous interpretation is appropriate.
The JR understood this rule to include a double/twofold ‘appropriateness-test’, in the sense that it is to be decided
- whether allowing interpretation during the oral hearing is appropriate and
- whether it is appropriate that the costs of such interpretation shall become costs of the proceedings.
As to (i) allowing simultaneous interpretation
The JR held that it is beyond doubt that actively conducting a hearing in a foreign language places higher demands on the parties and their counsel in terms of their language knowledge compared to merely reading written documents.
The JR respected the defendant’s judgement regarding his own language skills and allowed simultaneous interpretation during the hearing.
As to (ii) about the costs for simultaneous interpretation
The JR found this question more difficult to answer. Should the costs of the simultaneous interpretation become costs of the proceedings to be decide upon under RoP 150 UPCA.
Translation to/from the Polish language was requested. This is not an official language of a Contracting Member State (CMS) nor is it an official or designated language of the CMS of the LD The Hague where the main action was filed
The language of the European patent that is the subject of this action is English.
Polish is also not an official or designated language of any other Local or Regional division of the UPC, nor of the EPO. Generally, it cannot reasonably be expected that the UPC provides translations to all languages, even if these have no relationship at all with the UPC or with one or more CMS.
The defendant has chosen to expand his business outside Poland to UPC-territory where he cannot, or at least not usually, conduct his business in Polish. He also deliberately took the risk that he would be taken to court over patent infringement in the Netherlands, as proceedings on the merits against the defendant for infringement of the Polish national counterpart of the same patent that is the subject of this action are pending in Poland since July 2023. These proceedings and the present action were both started after the defendant was warned by the proprietor that his products allegedly infringe the patent.
Conclusion
The JR therefore rejected the request for the court to arrange simultaneous interpretation and for the costs involved to become costs of the proceedings pursuant to RoP 109.1 UPCA. The defendant is permitted to engage an interpreter at his own expense pursuant to RoP 109.4 UPCA.
Comments
The decision of the JR is justified.
Should the defendant have been an opponent before the EPO, he would have had to bear the costs for simultaneous interpretation from Polish to the language of the proceedings, in this case English and vice versa.
Why should it be different at the UPC?
It do not remember a case in which a party whose language is not an official language of the EPO to come to an OP with interpreters.
In one case I know, the interpretation from Finish to English during the hearing of a witness was done by the European representative of the party having proposed the witness.
Order UPC_CFI_195/2024-ACT_23163/2024-App_35134/2024
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