A guide to the UPC and the UP - Flipbook - Page 470
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to provide mediation and arbitration rules, fee schedules, model clauses for use in
mediation and arbitration and other regulations,
–
to provide facilities which the parties can use to carry out mediation and arbitration
proceedings,
–
to promote and to organize the training of mediators and arbitrators in cooperation with
the UPC training centre in Budapest and if appropriate other institutions.
22-52 As the first two of these particular objectives there are as yet no mediation or arbitration
rules for the Centre. 66 Neither is there a schedule of fees for any of the services of the
Centre. Accordingly it is at this stage only possible to make some general observations
about these topics.
22-53 Although art.35(2) UPCA refers to the Centre providing facilities for “patent disputes falling
within the scope of this Agreement”, it is clear that this will cover all disputes falling within the
competency of the Court as defined in art.32 UPCA, including matters such as SPCs that,
although not patent rights, can clearly form part of a patent dispute and are within the scope of
the UPCA. However, the Rules of Operation of the Mediation and Arbitration Centre go further
and express the objective of the Centre as being to promote mediation and arbitration “in cases
which fall wholly or in part within the competence of the UPC.” The expression “in part”
suggests that the Centre should also be able to resolve matters which the Court does not prima
facie have competence to hear, but which are factually or legally linked to one or more Unitary
patents or traditional European patents that have not been opted out and as to which the Court
does have competence. The most obvious example of such other matters as to which the Court
itself lacks competence would be disputes concerning other patents in the same family,
whether these be traditional European patents that have been opted out, national patents or
utility models or patents outside Europe. Since in practice most international patent disputes
will also involve countries outside the Contracting Member States, to have limited the objective
of the Centre solely to cases wholly within the competence of the Court would have severely
compromised the role of the Centre in resolving patent disputes.
Routes to Using the Centre
22-54 There are a number of ways in which parties in dispute may come to use the facilities of the
Centre. These include:
66
67
68
–
The parties are involved in litigation before the Court and are either encouraged to use
the facilities of the Centre to explore the opportunities to settle the dispute 67 or one party
makes a request to mediate or arbitrate the dispute through the Centre and the other
parties expressly consent to this;
–
The parties have an ongoing contractual relationship, for example under a patent licence,
and the dispute resolution clause in their contract stipulates that disputes under the
contract will be subject to mediation or arbitration at the Centre. As it appears that the
scope of the disputes that can be dealt with by the Centre is broader than the competence
of the Court, parties should be able to resolve wider contractual disputes at the Centre,
notwithstanding that the competency of the Court itself does not include general
contractual disputes; and 68
On 27 November 2015 the Advisory Committee adopted what were stated to be Version 5 of the Unitary Patent Mediation
Rules. There were a number of outstanding issues in these but they appeared overall to be similar to the WIPO mediation
rules. For the current version of the WIPO mediation rules see https://www.wipo.int/amc/en/mediation/rules. However the
2015 document was evidently no more than a draft so there can be no assurance as to the final form that such rules will take.
See paragraphs 22-04 to 22-06 for further details of the Court’s role in encouraging settlement.
art.32 UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 460
