Author: Giovanna Del Bene
After years of debate and negotiating, the new European Unitary Patent and the Unified Patent Court (UPC – with a local division in Milan) will be implemented in the first half of 2023. This event will have a relevant impact non only on future European patents, but also on already existing European patent rights.
Amongst the most important changes, the Unified Patent Court Agreement (UPCA) established a patent Mediation and Arbitration Centre. According to Article 35, the Centre shall have its seats in Ljubljana and Lisbon. It shall provide facilities for mediation and arbitration of patent disputes falling within the scope of the Agreement. However, a patent may not be revoked or limited in mediation or arbitration proceedings.
Moreover, the Centre shall establish Mediation and Arbitration Rules and it shall draw up a list of mediators and arbitrators to assist the parties in the settlement of their dispute.
There are several advantages for companies that choose arbitration or mediation over an ordinary judgment. In particular, these ADR procedures are characterized by confidentiality, by greater speed and cost-effectiveness, since the parties have control over the timing and the manner in which the procedure is conducted.
What’s new with the UPC
The UPCA provides for the UPC to have jurisdiction on already granted and validated European patents, as well as on pending European patent applications. In other words, the UPC will handle the litigations related to European patent rights and the rulings delivered by the UPC will have effect in all the 17 countries adhering to the UPCA.
From one side, this advantageously allows to enforce or invalidate a patent through a single action affecting a plurality of countries through a procedure which is meant to be fast and reliable; a first instance’s ruling is expected to be delivered within one year from the litigation start.
From the other side, a centralized procedure implies the risk to invalidate, with a single ruling, all validations of a European patent (among the adhering countries). Furthermore, the centralized procedure will have higher costs than corresponding national legal actions. In addition, while in Italy invalidity and infringement of a patent are discussed within the same lawsuit, in some cases the UPC might follow a split path, where invalidity and infringement have to be discussed in front of two different court divisions.
Given the current dynamic economic context and the new rules introduced by the UPCA, arbitration and mediation are to be considered as the most efficient way of resolving conflicts, as they are able to offer effective, professional and timely decisions.
At THINX our consultants are experienced in negotiation, arbitration and mediation techniques and we can provide our assistance during the above procedures.
© THINX Srl – December 2022