Journal

Arbitration rules of the Patent Mediation and Arbitration Centre of the UPC

On 4 August 2025, CIPA submitted its response to the consultation on the draft arbitration rules of the Patent Mediation and Arbitration Centre of the Unified Patent Court. The response was drafted by the UPC Committee with the support of Clive Thorne (McCarthy Denning).

We have read with interest that the Patent Mediation and Arbitration Centre of the UPC (‘PMAC’) is actively engaging users in shaping its regulatory framework. We are grateful for the opportunity to provide comments, observations, or suggestions in relation to the PMAC’s draft arbitration rules. As requested in your invitation letter, we have set out below some suggested amendments to the draft rules, accompanied by explanatory notes outlining the rationale for the suggested amendments. We have adopted the defined terms used in the draft rules below.

Our comments reflect the perspective of users of alternative dispute resolution (‘ADR’), who are eager to see all the PMAC’s services being widely adopted. Overall, we consider the draft rules to be well drafted and fit for purpose. As now drafted, the rules offer the necessary flexibility for parties using them. Arbitration practitioners will recognise similar rules and provisions used in other sets of arbitration rules. This we feel is helpful as that familiarity will encourage users to make use of the Centre’s services and adopt these rules. We have made some suggestions on certain parts of the rules for your consideration below.

Article 1 – FRAND definition. Include a sentence that the term RAND (e.g. as used in ITU policy documents) is understood to have the same meaning as FRAND. Alternatively, use ‘F/RAND’ as the defined term in the rules.

Article 4(5) – delete reference to a ‘consent arbitral award’. It should be sufficient that the parties at the ADR information session may conclude a mediated settlement agreement. References to awards, at this stage, may discourage some parties wary of arbitration from participating at what is a session to explain the benefits and logistics of mediation/arbitration.

Article 5(2) – If the Centre’s CMS is not in operation then parties should be able to lodge documents via email (not just in hard copy at the Centre) as is possible with other arbitral bodies.

Article 5(5) – We suggest that communications are deemed received if they are received during business hours (e.g. 9am-5pm) on the day they are sent. This is to discourage tactical filings such as late on a Friday evening.

Article 6(2)(ii) – This rule about the Expedited Procedure says, ‘If the Arbitration Agreement provides for an arbitral tribunal composed of more than one Arbitrator, the Centre shall invite the parties to agree to refer the case to a sole Arbitrator.’ We suggest that a mechanism is put in place in case a party disputes use of a sole arbitrator. Our suggestion would be that any party that disagrees has five days to give reasons for their disagreement and the other party five days to reply. The Centre will then give its decision within five days if necessary, taking into account the circumstances of the case.

Article 22(5) – We suggest that adding that, if agreed by the parties or considered appropriate by the Tribunal, a list of the issues to be decided may also be finalised at the case management conference. It is helpful that there is flexibility for subsequent case management conference which are very useful in complex matters such as F/RAND disputes (see article 23).

Article 40(2) – This rule says, ‘The Centre may provide for a single extension of the time for handing down a final award upon a reasoned request from the Tribunal where there is consent by the parties to an extension, or if otherwise deemed necessary’. [Emphasis added]. We suggest that the Centre be open to further reasoned requests for extensions where the delay is caused by factors outside the parties’ control. For example, whether the Tribunal’s other commitments have prevented them meeting to finalise the award.

Article 41(1) – We suggest a time limit of say 30 days is set for the Centre to make any observations about the award. If that is not possible then the Centre should be transparent with the parties on the likely timeline.

Article 46 –In relation to article 46 we suggest combining (vi) to (vii) as ‘the determination of selected licensing terms and conditions’. Some issues (e.g. temporary licence terms) are contentious, and their inclusion in the list may discourage parties from using the Centre and opt for a different forum. Note that article 47 is missing from the draft rules.

Article 52(1) – In relation to allocation of costs, we agree that the costs of the arbitration should in principle be borne by the unsuccessful party or parties. However, we suggest the Centre expressly say that issues-based costs allocation is an option available to the Tribunal taking into account the circumstances of the case. This could be referenced in article 52 and/or in explanatory guidance published by the Centre.