E-News No.46

E-News No.46

The Mediation Service under the Agreement of a Unified Patent Court

by Lorna Brazell and Wendela Hårdemark (Osborne & Clark LLP and Sandart&Partners Lawfirm – UK and Sweden)

A first draft of the Mediation Rules under the UPC Agreement (“the Rules”) has been published by the Preparatory Committee. Though still subject to further “legal scrubbing”, the services of the mediation centre are now broadly established.

As agreed by the contracting members states in Europe, following art. 35 of the UPC Agreement, a patent mediation and arbitration centre has been established (“the Centre”) providing facilities for a flexible and expeditious resolution of disputes falling within the scope of UPC Agreement. The Rules clarify that parties can include in mediation any other disposable right or obligation factually or legally linked to the dispute which is within the UPC’s exclusive competence. The Centre will be based in Ljubljana and Lisbon.

The services of the Centre can be required upon request by one party or the parties jointly. Even though the Court may not order the parties to initiate mediation the Court shall actively explore, under all the stages of the proceedings, the possibilities for the parties to solve their issues through use of mediation. The proceedings will in such case be stayed. Notably, a recommendation from the UPC, accepted by both parties, appears also to be a condition for the parties’ use of the Centre.

The Rules set out the formal requirements to be included in a request for mediation, a form for which will be provided on the Centre’s website, and a mechanism for appointing a mediator if the parties have not agreed who it is to be. The parties are free to appoint any mediator to their liking; either from the Centre’s long list or elsewhere. If not already agreed upon, the Centre will recommend five candidates in alphabetical order and the parties must then agree on the appointment within a month. Mediators not on the Centre’s list are eligible provided they meet the eligibility criteria of neutrality, impartiality and independence. If the parties still cannot agree, the Centre will appoint someone after consultation.

The parties are free to choose place of mediation and language. Failing agreement, the Centre, after consultation with the parties, will decide on the place of the mediation; the language will be the one in which the patent was granted.

The conduct of the mediation is up to the parties to agree upon or, failing their agreement, at the mediator’s discretion, subject to a limit of three months from appointment of the mediator (which, however, can be extended if all parties and the mediator agree). The parties are required to cooperate with the mediator in good faith. If the mediation has not resulted in a settlement within 12 months, the Centre may terminate it. The mediation can furthermore be terminated if the mediator declares that further efforts are no longer justified, or by a written declaration of a party to the other and the mediator, terminating the mediation.

Mediation under the Rules is conducted in full confidentiality and information disclosed in the course of the mediation cannot be introduced as evidence in any judicial or arbitral proceedings. However, surprisingly and in contradiction to one of the basic principles of mediation, the Rules appear to establish a default position under which information imparted to the mediator by one party can be communicated to the other party unless the party giving the communication expressly requests him not to. It remains to be seen if this peculiarity will prevail in the further scrubbing.

The costs of the mediation are borne equally between the parties and administered by the Centre during the process. A schedule of mediation fees will be fixed and published by the Centre.