A guide to the UPC and the UP - Flipbook - Page 472
Will Arbitration Agreements be Binding on the Court?
22-60 Under art.32 UPCA the Contracting Member States have agreed to cede exclusive jurisdiction
over a range of patent disputes to the Court. There has been some concern raised that this may
result in the Court being able to hear cases falling within art.32 UPCA where the parties to the
dispute have previously agreed to give exclusive jurisdiction to resolution of disputes to an
arbitral tribunal. This is on the basis that, unlike the courts of the Contracting Member States,
the Court is not a signatory to the 1958 New York Convention on the Recognition and
Enforcement of Foreign Arbitral Awards 70 and therefore is not bound by its art.II(1) which
requires courts to recognise written agreements:
“under which parties undertake to submit to arbitration all or any differences which have arisen
or which may arise between them in respect of a defined legal relationship”.
22-61 Although this is an interesting argument, it seems unlikely that this issue will be a problem in
practice as the Contracting Member States were all signatories of the New York Convention
prior to signing the UPCA, meaning that they are unable to grant jurisdiction in relation to
disputes to which they have already ceded jurisdiction (namely disputes that would fall within
art.32 UPCA that are subject to agreements to arbitrate). If this position is incorrect, it is likely
that any arbitration rules that parties may choose to use will contain a waiver on the part of the
parties to any recourse to a court in relation to the dispute. 71 Therefore the party could seek to
enforce this as a contractual matter under the arbitration agreement.
Determining Infringement and Validity by Arbitration
22-62 Although the ability of an arbitral tribunal to determine matters of infringement is hardly ever
questioned, the inability of a party to revoke a patent in arbitration proceedings is sometimes
cited as a reason why arbitration is used less frequently to resolve patent disputes than it is to
resolve disputes in other areas. In Europe, only Switzerland and Belgium have allowed validity
of patents to be decided in arbitration with effect erga omnes (i.e. with effect against everyone
and the national patents register being updated accordingly). 72 Such concern is misconceived.
Whether or not a patent can be revoked with effect erga omnes has no bearing whatsoever on
whether or not, as between the parties to an arbitration, a patent may be held by the arbitral
tribunal to be treated as invalid, with the effect that the patentee cannot enforce such patent
against the other party to such arbitration. As it is highly unlikely that such other party would
have any interest in revoking, erga omnes, a patent that can no longer be asserted against it, as
opposed to its competitors, the inability to revoke the patent is of no practical significance to it;
indeed it is if anything of benefit to it.
22-63 Consistent with this the second sentence of art 35(2) UPCA provides that “a patent may not be
revoked or limited in mediation or arbitration proceedings,” here referring to its effect erga
omnes. However, as parties to proceedings before the Court can agree to limit, surrender
or0revoke a patent by settlement, 73 and as the disputes the Centre can hear mirrors the
competence of the Court, it would seem likely that the validity of a patent, can be assessed
by arbitration at the Centre with the patentee agreeing in the arbitration agreement to limit,
surrender or agree to revocation of a patent in line with an arbitral award. This is similar to the
current position under German law, where an arbitration tribunal can decide that a patentee
must consent to having their patent declared invalid by the patent office (giving an indirect erga
omnes effect).
70
71
72
73
http://www.newyorkconvention.org/english [Accessed 26 April 2023].
See for example art.66(1) WIPO arbitration rules and art.35(6) ICC arbitration rules.
See Trevor Cook and Alejandro Garcia, International Intellectual Property Arbitration, Kluwer Law International 2010.
r.11(2) RoP. See paragraphs 22-28 to 22-32.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 462
