A guide to the UPC and the UP - Flipbook - Page 463
22-19 The question of whether or not the parties request that the terms of the settlement are
confirmed by the Court’s settlement decision will clearly have a very significant impact on
enforcement. The choice will determine whether the enforcement of the terms of the
settlement is a contractual matter or whether the terms are enforceable as an order of the
Court. Therefore, if the parties are willing to share the terms of the settlement with the Court,
allowing the confirmatory decision to contain the terms of the settlement may be a useful tool,
as it will enable the parties to enforce the decision in any of the Contracting Member States as
if it was a judgment of a court in that Contracting Member State, like any other Court decision.
In addition, it also appears that it is possible for the Court to order that these settlement terms
are confidential. 25 If the parties wish to enforce such a Court decision outside of one of the
Contracting Member States, the relevant regulation or convention on enforcement of
judgments between contracting states will apply. 26
22-20 Given the broad definition which it is apparent the Court will give to what it considers to be
a settlement agreement, it is interesting to consider how far this may extend. This includes
arbitral awards by consent, 27 and the distinction between arbitral awards and arbitral awards
by consent was only added into a later draft of the RoP, presumably as arbitral awards (made
by the Centre or otherwise) that are not made by consent will be binding on the parties and
enforceable in accordance with the New York Convention of 1958. 28 Therefore, it seems likely
that the confirmation by way of a decision procedure will be available in all cases where Court
proceedings end, unless there is a binding and enforceable decision on the merits, either by
the Court itself or following arbitration. Where it appears unlikely to be available is where
parties settle their dispute prior to proceedings being commenced, as r.365(1) RoP refers to
the parties’ “action” being concluded by way of settlement, as opposed to their “dispute”
being so concluded.
22-21 There do not appear to be any restrictions on the nature of terms within settlement
agreements that can be confirmed by the Court, so long as the terms are validly enforceable
as contractual settlement terms. Therefore, it is possible for the parties to agree to revocation
or limitation of a patent in a settlement. 29 It should also be possible for the Court to confirm a
term in a settlement agreement whereby a party agrees to submit to an injunction, although
there are no further specific details on this contained within the UPCA or the RoP.
22-22 It is also unclear how the Court will deal with a situation where only one party wishes for
the terms of a settlement to be confirmed by a decision of the Court. Due to the benefits of
enforcement, 30 the party benefiting under a settlement would generally be expected to be
more in favour of having the terms of a settlement confirmed by way of a decision, whereas
the party with the burden under the settlement is more likely to resist such a move. Therefore,
this situation is likely to arise relatively often. On the basis of r.365(2) RoP, the Court’s default
position appears to be that the terms of a settlement agreement will be included in any
confirmatory decision, unless a request is made by “the parties”, in which case the Court may
order that the details of the settlement should be kept confidential. However, whether this
reference to parties in the plural is intended to require that the request is made by all parties
is not clear.
25
26
27
28
29
30
r.365(2) RoP. For a further discussion on this point, see paragraphs 22-33 and 22-34.
For example, the Brussels I Regulation (recast) or the Lugano Convention. Neither the EU nor its Member States are parties to
the United Nations Convention on International Settlement Agreements Resulting from Mediation (“Singapore Convention”).
For further details on the enforcement of Court decisions, see chapter 19 (Enforcement).
r.11(2) RoP.
“Table with explanatory notes to the changes made by the Legal Group of the Preparatory Committee in the 17th draft of the
Rules of Procedure” 31 October 2014, pp.3 and 4.
See paragraphs 22-28 to 22-32.
See paragraphs 22-44 to 22-49.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 453
