Expert Determination Clauses

A. Introduction

According to Rule 5(2) of the Rules of Operation (RoO) of the Patent Mediation and Arbitration Centre (PMAC), one objective of the Centre is to provide model clauses for use in mediation and arbitration proceedings before the Centre.

This document provides model dispute resolution clauses concerning possible future disputes between the parties that may be incorporated into contractual provisions governing the relationship between the parties or which, may be used on an ad hoc basis to submit an existing dispute to expert determination. The expert determination service of the PMAC offers support in the resolution of disputes relating to European patents, European patents with unitary effect and supplementary protection certificates for which the Unified Patent Court (UPC) is competent pursuant to Article 32 of the Unitary Patent Court Agreement (UPCA), and related disputes. Related disputes are defined in the Rules on Expert Determination of the PMAC as disputes involving other patents, patent applications, or portfolios of the same, whether or not the patent rights in question are European patents, European patents with unitary effect or supplementary protection certificates or any other intellectual property or commercial disputes, as long as there is a factual, legal or commercial nexus with an actual or contemplated dispute concerning a European patent, a European patent with unitary effect, or a supplementary protection certificate for which the UPC is wholly or in part competent.

The PMAC model clauses are exemplary in nature. Parties are free to customize and refine the PMAC model clauses to meet their specific needs. Certain provisions of the Expert Determination Rules make clear that parties may agree to derogate from the provisions in question. Parties should consider whether they wish to include any such agreed derogations in their expert determination clause or expert determination submission agreement.

The following model clauses have been developed by the Centre in consultation with the Expert Committee of the PMAC.

Disclaimer:

the model clauses are provided for general informational purposes only;
they do not constitute legal advice or representation; and
users are encouraged to seek advice from qualified professionals before use.

B. Proposed Expert Determination Clauses for the PMAC

1. General Model Expert Determination Clause

Any dispute, controversy or claim arising out of or in connection with this Agreement, including but not limited to the Agreement’s formation, interpretation, validity, breach or termination thereof, as well as any non-contractual claims, shall be settled by expert determination in accordance with the Rules of Expert Determination of the Patent Mediation and Arbitration Centre (PMAC).

The parties agree that the request, notices, and any other communications under the PMAC Rules of Expert Determination shall be lodged and delivered using the Case Management System of the PMAC.

Note: parties may wish to make use of the following additional provisions:

The determination shall be [specify binding/non-binding] on the parties.

The Expert shall apply to the substance of the dispute the rules of law [specify jurisdiction].

The place of determination shall be [specify city and country].

The language of the determination shall be [specify language].

2. Model Expert Determination Submission Agreement

We, the undersigned, hereby agree to submit the following dispute to be settled by expert determination in accordance with the Rules of Expert Determination of the Patent Mediation and Arbitration Centre (PMAC):

[Insert a succinct summary of the facts giving rise to the dispute, including a specification of the intellectual property rights involved, and/or any related disputes.]