Danilo Ruggero Di Bella, Speaker at the EUIPO

On October 10, 2024, Danilo Ruggero Di Bella was invited to speak at the European Union Intellectual Property Office (EUIPO) about the “Enforceability issues of the Patent Mediation and Arbitration Centre (PMAC)” of the Unified Patent Court (UPC). Danilo predicted how PMAC arbitral awards will face numerous annulment proceedings and objections in enforcement proceedings on the ground of public policy, since PMAC arbitral tribunals are prevented from seeking out preliminary rulings by the CJEU on the correct interpretation of EU competition law, an area of the law inherently intertwined with IP rights.  The same goes for the SEP arbitrations (Standard Essential Patents arbitrations) of the EUIPO Competence Centre which will be affected by the very same problem in the future once it becomes operative. 

Here are three key takeaways for practitioners: 

1.          If you lose a PMAC arbitration, don’t panic! Chances are you can set it aside or oppose enforcement on the ground of public policy within the EU.

2.          If you fear that the opposing party may challenge the future award on the ground of public policy, consider opting for a seat of arbitration outside the EU (PMAC arbitrations can be held anywhere in the world pursuant to Rule 4 of the PMAC RoO). Thus, you’ll secure the award against setting aside proceedings since EU competition law will not be a concern for any national court outside the EU. 

3.          Consider where the award-debtor’s assets are located to assess whether or not to convert a PMAC consent award into a UPC decision. If enforcement is likely to take place within the EU, then it makes sense to have the award confirmed by the UPC, being a court common to the EU Member States for the purpose of recognition and enforcement of its judgements. Conversely, if the winning party will seek enforcement outside EU borders, then an international arbitral award will be way easier to enforce than a foreign court judgement.

As to the takeaways for Institutions (UPC & EUIPO) on how to manage enforceability issues of patent arbitrations in Europe, please read Danilo's article on the Kluwer Patent Blog of the Wolters Kluwer: IP Law: https://patentblog.kluweriplaw.com/2024/02/19/fixing-enforceability-issues-of-the-patent-mediation-and-arbitration-centre/