A guide to the UPC and the UP - Flipbook - Page 128
The New York Convention
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With regard to arbitration, the Convention on the Recognition and Enforcement of Foreign
Arbitral Awards, signed in New York on 10 June 1958 (also called the 1958 New York
Convention) has been ratified by all Contracting Member States and by many other countries,
including the Member States. 99 It contains not only an obligation on national courts to decline
jurisdiction and to refer the parties to arbitration if they have concluded a valid and enforceable
arbitration agreement, but also an obligation on national courts to recognise and enforce
arbitral awards. The Court is bound to respect the New York Convention because all the
Contracting Member States have ratified this Convention and because the Brussels I Regulation
(recast) states in recital 12 that:
“… nothing in this Regulation should prevent the courts of a Member State, when seised of an
action in a matter in respect of which the parties have entered into an arbitration agreement,
from referring the parties to arbitration, from staying or dismissing the proceedings, or from
examining whether the arbitration agreement is null and void, inoperative or incapable of being
performed, in accordance with their national law.”
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However, the UPCA also contains provisions regarding the establishment of the patent
mediation and arbitration centre (the Centre) in art.35 UPCA. According to art.35(3) UPCA,
the Centre shall establish Mediation and Arbitration Rules. According to the hierarchy set forth
in art.24(1) UPCA, 100 the provisions in the UPCA take precedence over international agreements
such as the New York Convention. 101
National Law as a Source of Law
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Where there are gaps left by EU law, including the Unitary Patent Regulation, the UPCA and the
EPC and any other relevant international agreements, recourse is to be had to national law. 102
The question then arises as to what national law should the Court apply?
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Art.24(2) UPCA provides a second hierarchy for choosing the applicable national law.
Accordingly, the private international law rules of the following sources of law have to
be applied in this order:
– First, private international law rules of directly applicable EU law;
– Then, private international law rules of international instruments; and
– Lastly, private international law rules of national provisions.
Which National Law Applies to Contractual Issues?
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99
100
101
102
Where a licence is being deployed as a defence to an infringement action, there may be
disputes before the Court about its content or scope which remain governed by its choice of
law clause. To the extent that the contractual issues are inherently related to the determination
of infringement of a Unitary patent or a European patent, the Court must address these issues
and adjudicate them. To the extent that the law applicable to the contract has not been chosen
by the parties, the law governing the contract shall primarily be determined by reference to
Union private international law rules, in particular, Rome I.
For a list of the current signatories of the New York Convention please refer to http://www.newyorkconvention.org/countries
[Accessed 13 April 2023].
See paragraphs 7-03 to 7-07 and figure 7-1.
See chapter 22 (Settlement and the Patent Mediation and Arbitration Centre).
art.24(1) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 118
