Journal

Draft regulatory framework governing the procedures at the Patent Mediation and Arbitration Centre of the UPC

On 1 August 2025, CIPA submitted its response to a consultation on the draft regulatory framework governing the procedures at the Patent Mediation and Arbitration Centre of the Unified Patent Court. The response was drafted by the UPC Committee with the support of Mark Marfé (Pinsent Masons).

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 mediation 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 the PMAC’s services being widely adopted. To support this goal, we believe the rules should be as flexible and adaptable as possible, in recognition of the consensual nature of mediation. Users of the UPC come from a range of jurisdictions and industries, each bringing unique approaches to resolving patent disputes. Their experiences with ADR will also vary significantly. It is therefore essential that the mediation rules are sufficiently adaptable to accommodate these differing viewpoints and to foster broad engagement. Parties may opt to mediate in another forum if they feel that the Centre’s rules are too inflexible.

For this reason, we suggest that draft mediation rules are streamlined to focus on the operation of the Centre and its interaction with the parties and Neutrals. In particular, rules about the proceedings, how they are set up and conducted once the parties have agreed to mediate and upon a Mediator, and what happens during and after the proceedings could be set out in the mediation agreement. This would allow for a flexible and adaptable process. We note that article 28(1) incorporates the mediation rules into the mediation agreement. This is a potential source of conflict that could be avoided by adopting our suggested approach.

Mediators use standard terms which deal with the mediation process. Our experience is that these terms typically require little substantive amendment. However, the parties are free to suggest amendments to the mediation agreement e.g. to ask for the scope of dispute to be defined in a particular way, for specific documents to be included (or excluded) in the mediation bundle or to require that the mediation day be conducted in a particular way unless and until the mediator suggests otherwise. Considering the above, much of sections 4 and 5 (articles 11 to 25) could be addressed in the mediation agreement (as agreed by the parties) rather than in the rules themselves. We note that article 8 says the Centre may assist with drafting the mediation agreement so it could be that the content of sections 4 and 5 (as amended below) could be suggested as terms to include in the mediation agreement when assistance is requested by the parties.

In relation to the specific provisions of the draft rules:

Article 5 – There has been comment in some industry sectors that parties will sometimes propose mediation solely as a delaying tactic. It would therefore be useful for the UPC to provide guidance on the criteria as to when a stay may be ordered while there is a referral to the Centre.

Article 10(2)(c) – This article provides that, in the absence of agreement on choice of mediator, the Centre shall appoint a mediator, ‘following consulting with the parties’. It would be helpful for a deadline to be included in this section on this consultation process in the same way as there is a 15-day deadline in article 10(2)(b). Setting a deadline would avoid a drawn-out consultation process.

Article 12 – Proposed amendment: ‘Each party shall identify a representative of that party who is authorized to settle a dispute on behalf of that party and who shall participate throughout the proceedings.’

The amendments above are to remove some inconsistencies in the drafting and to clarify the role of this participant. What is important is that each of the parties has an attendee present with authority to settle. That individual may not be the direct contact with the other parties or the spokesperson at the mediation so it should be sufficient that they are a participant in the Proceedings.

Article 14 – In the absence of agreement by the parties, we suggest that the language of the mediation should be either English or the language of any ongoing UPC proceedings (if different). We are concerned that an ability to set the language of the mediation may discourage certain parties from using the Centre.

Article 15(5) – Deals with private meetings between one (or more) of the parties and the mediator. We suggest deleting the second sentence, which provides that the mediator must disclose to an opposing party the date of any meeting or communication with the other party. This is likely to be unworkable considering the way mediators typically communicate with parties in the run-up to the mediation, which can be ad hoc and informal at times. It also does not serve any useful purpose. Should the parties require such a rule then it can be agreed between them.

We also disagree with the third sentence, which provides that any information given to the mediator by a party in private session may be disclosed to the other party unless the disclosing party says that the information is confidential. The default position should be that any information provided to the mediator cannot be shared unless the disclosing party has agreed it can be shared. Parties should feel free to disclose to the mediator information that impacts their decision-making process and what they are prepared to agree, but which they do not want the other party to know.

Article 17 – Deals with termination. To enable a more flexible and adaptable process, we suggest stating in the rules that termination scenarios are to be set out in the mediation agreement. This is where these terms would typically be addressed.

Article 19 – Provides that the mediator may sign the mediated settlement agreement. As the mediator is not a party, we suggest that they should not be a signatory to this agreement. article 19 says that the sole purpose of the mediator’s signature is to certify that the mediated settlement agreement was reached using the facilities of the Centre. Such confirmation could be provided via a separate communication to the Centre sent by the mediator and/or the parties.

Article 20 – We suggest deleting article 20. It is for the parties to agree whether to enter a standstill during the proceedings. Mandating this may discourage participation by parties, e.g. because they are concerned that mediation is being proposed for tactical reasons by the other party. It would also typically be unnecessary where proceedings are afoot.

Article 21 – Refers to confidentiality and provides that the participants of the proceedings may not use or disclose to any outside party any information concerning the mediation. It should be clarified that what article 21 is concerned with is akin to Rule 11 of the UPC RoP, which encourages settlement and mediation. While Rule 11 does not use the term ‘without prejudice’ as the term is used in common law jurisdictions, it implies the same thing, i.e. that settlement discussions (including in mediation) are treated as separate from the formal litigation process. This restriction would cover information that may not be confidential per se. Confidentiality should be dealt with separately in the mediation agreement and under article 24.

Article 22(2) – We suggest deleting the list of matters that may be included in FRAND mediations. Article 22(1) already says the scope of the FRAND dispute is to be agreed, which is useful. While the list is not exhaustive, this is a fast-changing area of law and there is a risk that the list will change over time. Further, 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 mediation forum.

Article 25 – We suggest also deleting article 25, which is linked to article 20 as mediation scope can be addressed in the mediation agreement.

Article 27 – We agree that the default position should be that the costs the proceedings be shared equally, unless the parties agree differently. However, we disagree that the necessary costs should be mandated as this adds complexity to the process. In particular, the reference to expert input (article 27(1)(g)) should be deleted; it may discourage SMEs for using mediation if called out expressly. Such expert input would be unusual in a mediation.