Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

UPC judge: ADR centre should favour mediation over arbitration

AdobeStock_290704340 (1).jpeg

Sam Granata led a panel discussion on the new Patent Mediation and Arbitration Centre, which will open alongside the UPC in June

An alternative dispute resolution centre attached to the Unified Patent Court should focus on mediation over arbitration, a judge at the court suggested yesterday, January 10.

Sam Granata, who will be a judge at the UPC local division in Brussels, was speaking at an online event hosted by the Munich Intellectual Property Dispute Resolution Forum.

A panel that also included senior in-house counsel at InterDigital and Xiaomi explored the role of the Patent Mediation and Arbitration Centre (PMAC), which will be part of the UPC.

The centre, which will have bases in Slovenia and Portugal, will provide staff and facilities to help parties who wish to resolve cases out of court or are advised to do so by a judge.

Its scope includes mediation between parties and the appointment of arbitrators to resolve disputes.

Granata, who is also a judge at the Court of Appeal in Antwerp, said he was a strong believer in mediation but was reluctant to send parties to arbitrators, who are effectively in competition with courts.

“It’s as if the hunter directed the parties to the poacher,” he said.

The judge was more optimistic about the potential for PMAC mediators to help resolve disputes, especially those related to damages and costs.

Granata also urged court officials to ensure UPC judges are trained as mediators.

“It helps judges to see how mediation works and they also learn valuable communication skills,” he said.

In-house perspective

Counsel at InterDigital and Xiaomi both agreed that the PMAC would need to have a tight focus on core issues to be successful.

ZiAng Zhuang, director of IP and litigation at Xiaomi in Beijing, said disputes over fair, reasonable, and non-discriminatory (FRAND) royalties were often too complex to be resolved quickly via arbitration.

“There are issues to be worked through with arbitration but alternative dispute resolution (ADR) is not a one-size-fits-all solution, especially for FRAND disputes,” he said.

Steve Akerley, head of IP and litigation at InterDigital in Delaware, said ADR had to remain efficient in order to be attractive.

“If the PMAC is intended to cover infringement and validity, that removes some of the efficiencies we typically see in international arbitrations,” he said.

If PMAC arbitrations operated at the same efficiency level as the UPC, parties would prefer the UPC because they would retain the right to appeal, Akerley added.

The UPC is scheduled to open on June 1, following a series of delays.

more from across site and ros bottom lb

More from across our site

Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The FTC’s plans to scrutinise improperly listed Orange Book patents could make these listings more important in litigation, but firms should be looking at this anyway
Counsel at Debevoise & Plimpton explain how they helped food delivery business Grubhub avoid a preliminary injunction at the Court of Appeals for the Seventh Circuit
European lawyers tell Managing IP how the legal market is reacting to the first few months of the UPC and why cases are set to take off
The ban could be extended or cancelled, depending on whether Judge Pauline Newman cooperates with an investigation, the Judicial Council of the Federal Circuit stated
Sources say some China-based lawyers are prepared to take large pay cuts to join stable practices, but most firms are sceptical about new hires