UPC-series: UPC and Arbitration

The UPC Mediation and Arbitration Centre, seated in Lisbon and Ljubljana, supports the settlement of disputes concerning both “classic” European patents and UPs and has its own Rules of Procedure. Its main purpose is to encourage the parties to resolve their disputes by engaging in a fruitful exchange of functional solutions. The UPC has also the power at any stage of the proceedings, to refer the parties to the PMAC and enforce the outcome in form of a decision by consent. The working languages of the Center are English, German and French. The parties are free to choose any of these three available languages.

Three major issues arise from the wording of the UPCA and the Rules of Procedure of the Centre itself:

Exclusivity of the Mediation and Arbitration Centre as an Alternative Dispute Resolution mechanism (ADR): No exclusivity is specified in Article 35(2) of the UPCA. It seems that the UPCA leaves the window open for the parties to submit their dispute to another ADR provider.

Secondly, it remains to be determined if the Mediation and Arbitration Centre can resolve disputes upon opted-out patents and national patents.

Last but not least: According to Rule 11(2) RoP “a term which obliges the patent owner to limit, surrender or agree to the revocation of a patent or not to assert it against the other party and/or third parties” should be confirmed by the Court. This may cause confusion since the UPCA explicitly highlights that “a patent may not be revoked or limited in mediation or arbitration proceedings”. These two rules only apparently contradict: Rule 11(2) just clarifies that the UPC has to follow the patentees “spontaneous” decision to revoke, or limit its patent.

Since there are not any active cases yet before the PMAC, it is to be seen whether it is going to have an active, successive role in the patent litigation and in which extent its decisions are going to be enforceable.

Areas of Law

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