UPC_CFI_745/2024_May30 – Sunstar v SeraCon
- Court
- Local Division Mannheim
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Language of proceedings The claimant filed an infringement case against a German company in English and in fact wanted confirmation that that choice was effective. The JR confirms that that choice was effective because Germany has designated English as the language of their Local Division (per Art. 49(2) UPCA) and the exception of R. 14.2(b) RoP is not applicable. That exception only applies if only infringement in the country of the defendant is alleged, but in this case also (at least) infringement in Italy is alleged. Comment 1. A very strange question by the claimant, as by simply reading the Agreement and the Rules the answer is clear and moreover the defendant has not objected against the use of English. 2. The JR in giving the right answer makes two minor mistakes. He refers to the fact that the patent is granted in English but that is irrelevant for his answer. Furthermore, he refers to R. 14(b) RoP but that rule does not exist; it should be R. 14.2(b) RoP. 3. Art. 49(2) UPCA could in my opinion also be read as stating that if a contracting Member State chooses one or more EPO languages (English, French or German) as the language of their Local or Regional Division, this means that one can only litigate in that language. 4. It goes without saying that life would be simpler in the UPC if English would be accepted as the common language for all proceedings. 5. Anyway, the confirmation by the JR sends an important message to US companies and other international businesses: as a claimant, there is no reason to use any language other than English.
Full Decision Text
1 Mannheim Local Division UPC_CFI_745/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 30 May 2025 concerning EP 4 108 413 concerning App_63407/2024 CLAIMANT: Sunstar Engineering Europe GmbH, Emil-Fischer-Straße 1 - 86641 - Rain am Lech - DE, represented by: Holger Stratmann DEFENDANT: CeraCon GmbH, Talstraße 2 - 97990 - Weikersheim represented by: Matthias Sonntag PATENT AT ISSUE: European patent EP 4 108 413 PANEL/DIVISION: Panel of the Local Division in Mannheim DECIDING JUDGES: This order was issued by the legally qualified judge and judge-rapporteur Böttcher LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Patent infringement action – language of proceedings 2 BRIEF SUMMARY OF THE FACTS: Claimant sews Defendant for alleged infringement of the patent-in-suit, thereby stating infringing acts in several member states to the UPCA. Defendant is domiciled in Germany, the language of the patent-in-suit and the statement of claim is English. Defendant responded to the statement of claim in English. With regard to a request of Claimant to use the language in which the patent was granted (English) as language of the proceedings, the parties were informed, that, in the judge-rapporteur’s preliminary opinion, Claimant validly choose the English language of the patent-in-suit to be the language of the proceedings and that the additional request of Claimant in this regard may be regarded as a mere precaution measure in case the choice is not effective. The parties were given an opportunity to comment. Defendant did no comment. In its comment, Claimant points out that it has validly chosen the English language in accordance with R. 14 (2) a) RoP and confirms that its request to use the English language as language of the proceedings is a mere precautionary measure. In this context, Claimant specifies its request to the extent that its request should be considered primarily as auxiliary request pursuant Art. 49 (3) UPCA and secondarily as auxiliary request pursuant Art. 49 (5) UPCA. In this respect, Claimant argues that Defendant at least implicitly consented to the use of the English language by submitting all its pleadings in English so far. REASONS FOR THE ORDER: Claimant’s requests to use English as the language of the proceedings are not subject to a decision because Claimant’s choice of language in favour of English is effective, meaning that the conditions under which Claimant has validly submitted its requests are not met. To clarify this, a clarifying order is possible. 1. By filing its statement of claim in English and designating English as the language of the proceedings pursuant to Art. 49 (2) UPCA in its statement of claim, under the section on formalities, Claimant has chosen English as the language of the proceedings. 2. The choice is valid. English is the language of the patent-in-suit. Since Claimant alleges infringement throughout the relevant member states to the UPCA, in particular in Germany and Italy, a situation under R. 14 (b) RoP excluding Claimant’s right to choose does not exist. Claimant could also have filed the statement of claim in accordance with Art. 33 (1)(a) UPCA in particular in Italy and was not limited to filing it in Germany being Defendant’s principal place of business. ORDER: For clarification purposes, it is hereby determined that the Claimant has validly chosen English as the language of the proceedings. 3 ORDER DETAILS Order no. ORD_69256/2024 in ACTION NUMBER: ACT_63395/2024 UPC number: UPC_CFI_745/2024 Action type: Infringement Action Related proceeding no. Application No.: 63407/2024 Application Type: Generic procedural Application Issued in Mannheim on 30 May 2025 NAME AND SIGNATURE Böttcher Legally qualified judge
Key Holdings
- Choice of English language confirmed effective.
- Exception in R. 14.2(b) RoP not applicable as infringement alleged outside Germany.
- Confirmation that English can be used against German defendants.
Tags
- Case Management
- Germany
- Language of Proceedings