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A

RESEARCH PAPER

ON

Authored by: Prateek Garg

Student, Sixth Semester, B.Sc., LL.B. (Hons.)

Gujarat National Law University Gandhinagar

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Table of Contents Acknowledgements……………………………………………………………………i.

Research Analysis………………………………………………………………………….ii.

S. No. Chapter Page

1 Prelude…………………………………………………………01

2. Reasons to Consider ADR Mechanisms in Resolving IP Disputes ……………………………………………………….08 2.1 Quick & Efficient Resolution………………………………………………08 2.2 Cost Efficient…………………………………………………………………09 2.3 Flexibility of the Result………………………………………………………10 2.4 Control Over Process & Outcome…………………………………………10 2.5 Confidentiality…………………………………………………………………11 2.6 Maintained, Improved or New Business Relationships…………………11 2.7 Avoiding Local Corruption or an Under-Developed Legal System……12 2.8 Enforceability of Awards……………………………………………………13

3. Reasons to Avoid ADR Mechanisms in IP Disputes …………09 3.1 Concern about the Need for Emergency Injunctive Relief………………15 3.2 The Strategic Need for Precedent or Publicity……………………………16

4. Popular ADR Mechanisms Suitable for IP Disputes …………17 4.1 Mediation………………………………………………………………………17 4.2 Negotiation……………………………………………………………………18 4.3 Arbitration……………………………………………………………………19 4.4 Early Neutral Evaluation (ENE)…………………………………………19 4.5 Mini-trial………………………………………………………………………20

5. Role of WIPO in Resolving IP Disputes by ADR Mechanisms..21

6. Suggestions & Conclusions……………………………………24 6.1 Proposal for ADR Convention………………………………………………26

References……………………………………………………29

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P R E L U D E

A large part of my time during the twenty years of my practice as a lawyer was occupied in bringing about private compromises of hundreds of cases.

I lost nothing thereby not even money, certainly not my soul. -MAHATMA GANDHI

It is an attorney’s responsibility to “persuade his neighbors to compromise

whenever he can. Point out to them how the nominal winner is often a real loser -- in fees, expenses and waste of time.”1

-ABRAHAM LINCOLN

The need for alternatives to the formal legal system has engaged the attention of

the legal fraternity, comprising judges, lawyers and law researchers for several

decades now. This has for long been seen as integral to the process of judicial

reform and as signifying the ‘access-to justice’ approach. Alternative Dispute

Resolution (ADR) presents an alternative forum for most disputes. ADR offers a

system with procedural flexibility, a broad range of remedial options, and a focus

on individualized justice. ADR performs convenient and useful works that cannot

be done, or cannot easily be done, through formal adjudication. And in every case

in which one of the various modes of ADR offers a process or reaches a result

that differs materially from those of the formal courts, there is in fact a rival

system.2 ADR offers an alternative system for relief from the hardship created by

the substantive and procedural law of formal adjudication. Moreover, the

freedom, elasticity, and luminance of ADR bear a striking resemblance to

traditional Equity, offering relaxed rules of evidence and procedure, tailored

remedies, a simpler and less legalistic structure, improved access to justice, and a

casual relationship with the substantive law. Alas, the dark side of ADR is also

1 Scott H. Blackmand and Rebecca M. McNeill, Alternative Dispute Resolution in Commercial Intellectual Property Disputes, 47 AM. U. L. REV. 1709, 1734 (1998) 2 Thomas O. Main, ADR: The New Equity, 74 U. Cin. L. Rev. 329

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reminiscent of Equity: unaccountability, secrecy, an inability to extend its

jurisdictional reach beyond the parties immediately before it and certain

vulnerability to capture by special interests.

In India too the need to evolve alternative mechanisms simultaneous with the

revival and strengthening of traditional systems of dispute resolution has been

reiterated in reports of expert bodies. Reference in this context may be made to

the Report of the Committee on Legal Aid constituted by the State of Gujarat in

1971 and chaired by Justice P.N. Bhagwati (as he then was) which inter alia

recommended adaptation of the ‘neighbourhood law network’ then in vogue in

the U.S.A; the Report of the Expert Committee on Legal Aid: Processual Justice

to the People, Government of India, Ministry of Law, Justice and Company

Affairs (1973) (1973 Report) which was authored primarily by its Chairman Justice

V.R.Krishna Iyer (as he then was) which while urging ADR (lok nyayalayas) in

identified groups of cases exhorted the preservation and strengthening of gram

nyayalayas; and the Report of two-member Committee of Justices Bhagwati and

Krishna Iyer appointed to examine the existing legal aid schemes and suggest a

framework of a legal services programme that would help achieve social

objectives.3 The last mentioned report formulated a draft legislation

institutionalizing the delivery of legal services and identifying ADR, conciliation

and mediation as a key activity of the legal services committees. Each of these

reports saw the process of improving access to justice through legal aid

mechanisms and ADR as a part of the systemic reform of the institution of the

judiciary coupled with substantive reforms of laws and processes. The present

have of legal reforms have only partly acknowledged and internalized the

recommendations in these reports. Still, the implementation of the reforms poses

other kinds of challenges. The attempt through the introduction of S.89 of the

Code of Civil Procedure 1908 (CPC) is perhaps a major step in meeting this

challenge.

3 Report on National Juridicare Equal Justice – Social Justice, Ministry of Law, Justice and Company Affairs (1977) (1977 Report)

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The reasons for the need for a transformation are not much in dispute. The

inability of the formal legal system to cope with the insurmountable challenge of

arrears argues itself. The Parliamentary Standing Committee on Home Affairs

found that as of 2001, there were in 21 High Courts in the country, 35.4 lakh cases

pending.4 Of the 618 posts of High Court judges there were 156 vacancies as on

January 1, 2000.5 The position in the subordinate courts was even more alarming.

There was a backlog of over 2 crore (20 million) cases for as long as 25 to 30

years.6 Of these, there were over 1.32 crore (13.2 million) criminal cases and

around 70 lakhs (7 million) civil cases.7 The total number of subordinate judges8 in

all the states and union territories in the country, as of September 1999 was

12,177.

Despite this severe strain on resources, the performance of the subordinate

judiciary has been remarkable. A joint study by the Indian Law Institute and the

Institute of Developing Economies, Japan in March 2001, revealed that in a single

year (1998) the number of cases disposed of by the district and subordinate courts

was 1.36 crores (13.6 million).9 At the end of every year, however, the pendency of

cases remains at the figure of around 20 million, which means the subordinate

judiciary, is running hard to remain at the same place.10

In its 120th Report in 1988, the Law Commission of India had recommended

that “the state should immediately increase the ratio from 10.5 judges per million

of Indian population to at least 50 judges per million within the period of next five

4 J. Venkatesan, “Panel concern over backlog in courts”, The Hindu, New Delhi, March 10, 2002, 12: “The Committee was particularly disturbed by the fact that cases were pending for over 50, 40 and 30 years in the High Courts of Madhya Pradesh, Patna, Rajasthan and Calcutta. And more than 5 lakh cases were pending for over 10 years – 2 lakhs in Allahabad, 1,46,476 in Calcutta 28,404 in Bombay and 5,050 in Madras.” 5 Indian Law Institute, Judicial System and Reforms in Asian Countries: The Case of India, Institute of Developing Economies, Japan External Trade Organisation (IDE-JETRO), (March 2001) 39 6 Ibid. 7 Ibid. at 35 8 Ibid. at 6: This would include district and sessions judges, additional district and sessions judges, subordinate/assistant sessions judges, chief judicial magistrates, metropolitan magistrates and judicial magistrates. 9 Indian Law Institute, supra note 5 10 The same study (ibid. at 36) points out that at the end of 1998, there were 1.93 crore cases (19.3 million) which were pending in the subordinate courts for less than ten years.

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years.”11 In 2001, the ratio remains at 12 or 13 judges per million population.12

While it is debatable whether this relating of the number of judges should be to

the population as a whole or to the number of cases in the various courts, there is

no gainsaying that judicial officers are not paid very well and work in deplorable

conditions where basic infrastructure is unsatisfactory or inadequate.13

All of the above should in fact persuade prospective and present litigants, as

well as those engaging with the formal legal system as judges and lawyers, to

reservedly embrace the notion of ADR, conciliation and mediation. However, it

does appear there are many more factors that ail the formal legal system which, if

not adequately addressed in the proposed alternative system, may hinder the move

for transformation. This assumes particular significance in the context of

suggestions that the ADR, mediation or conciliation processes should be court-

annexed and institutionalized.

The issue which is going to be dealt with in this research paper is how the

problems of litigation in Intellectual Property (IP) infringement cases could be

solved. The obvious answer would be to make litigation faster and cheaper and

make specific rules on languages, publicity, and educate the judges. Such measures

would naturally be welcome, but litigation has always been perceived as too slow

and expensive. IP litigation only accentuates this situation due to the finite term of

protection and the nature of intellectual property as a right to prohibit others from

continuing infringements. In many fields of law the plaintiff’s interest in getting

damages is greater than their interest in getting an injunction. In intellectual

property law the situation is as a rule the other way around. Furthermore, the

resources and interests of governments are many times focused on questions that 11 120th Report of the Law Commission of India on Manpower Planning in the Judiciary: A Blueprint¸ Ministry of Law, Justice and Company Affairs, Government of India (1987), 3. 12 Recently in 2001, the Chief Justice of India said: “The reason why we do not have more judges across the board is because the States are simply not willing to provide the finances that are required…The expenditure on the judiciary in terms of the GNP is only 0.2 per cent; and, of this, half is recovered by the states through court fees and fines. Given the attitude of the states, is it any wonder that the jails of our country are filled to the brim, largely with undertrials.?”: “Speech by Hon’ble Mr. Justice S.P. Bharucha, Chief Justice of India on 26th November 2001 (Law Day) at the Supreme Court” (2001) 8 SCALE J-13 at J-14. 13 This led to a ‘public interest litigation’ by the All India Judges Association in the Supreme Court claiming better conditions of work as well as an increased and uniform pay structure. See orders in All India Judges Association v. Union of India (1992) 1 SCC 119; (1993) 4 SCC 288; (2000) 1 SCALE 136 and (2002) 3 SCALE 291

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are viewed as more pressing than IP litigation. These measures would not,

however, solve the problem of multiple parallel litigation that take place in many

countries. No country can, on its own, solve the problem of multiplicity of

litigation. Only through international cooperation and conventions can the

negative effects be diminished.

So far the possible solutions to the multiple litigation dilemma have been

adjudicatory, that is the approaches have been based on solutions where courts

resolve the dispute between the parties in a traditional adversarial (adjudicatory)

manner. This means essentially that the court decides the case after the parties

have presented their claims, grounds and evidence. The decision of the court is

final and binding; often it is however subject to appeal.

ADR could be a viable alternative to litigation. ADR comprises “all legally-

permitted processes of dispute resolution other than litigation,”14 which, is the

default procedure of dispute resolution. The use of ADR to resolve intellectual

property conflicts is a subject that “lies at the intersection of two rapidly growing

branches of law.”15 Intellectual property (IP) comprises “exclusive”16 “rights to

novel ideas as contained in tangible products of cognitive effort,”17 including

“literary, artistic and scientific works, performances of performing artists,

phonograms, and broadcasts, inventions in all fields of human endeavor, scientific

discoveries, industrial designs, trademarks, service marks, and commercial names

and designations, protection against unfair competition, and all other rights

resulting from intellectual activity in the industrial, scientific, literary or artistic

fields.”18

There are several reasons why ADR is particularly relevant for intellectual

property and, specifically, trademark disputes. Intellectual property litigation is

frequently more complicated and difficult to comprehend than other types of

litigation. In addition, the monetary costs of IP litigation can be astronomical,

often as a result of the costly discovery process necessary in such disputes. 14 Stephen J. Ware, Alternative Dispute Resolution 5 (2001) 15 Bryan Niblett, Arbitrating the Creative, 50 DISP. RESOL. J. 64, 64 (1995) 16 Ibid. 17 Dale A. Nance, Forward: Owning Ideas, 13 HARV. J. L. & PUB. POL’Y 757, 757 (1990) 18 Niblett, supra note 15, at 64

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Because of the lengthy discovery process typical of IP disputes, they often drag on

for excessive periods of time. One of the best reasons to apply ADR to IP

disputes, however, is its ability to provide a flexible resolution which benefits all

parties. No matter which type of IP law is at issue, ADR offers at least the

possibility of a cheaper, faster, more creative, and mutually beneficial solution. As

one Article has commented, “the world of intellectual property law calls for

dispute resolution mechanisms as fast-paced and efficient as the evolution of the

underlying technology and ideas which are the subject of the disputes.”19

Intellectual property law protects ideas, expressions of ideas and names (or

reputations) in patent law, copyright law and trademark law respectively. Success

in patent law, in particular, requires an ability to understand scientific or technical

concepts. This obligation might prevent key figures in the process - e.g., jurors or

judges - from clearly understanding the issues before them. In ADR, parties can

select neutrals that are familiar with the particular type of technology or process at

issue. This will likely result in a fairer resolution to both parties, as the neutral can

concentrate on the details and specifics of the case, as opposed to trying to learn

or better understand the technical process. Copyright law is not scientific or

technical like patent law. Instead, it deals with the expression of ideas in a fixed

tangible medium, focusing on whether there is some level of originality in a

creative work. Although it may sound like a simple task for a typical jury or judge,

making such detailed distinctions between books, movies, songs, or computer

programs (among other things) can be difficult and confusing. Once again, the

presence of an informed neutral that is familiar with copyright law can make the

process more efficient and tolerable for both parties.

At the other end of the intellectual property spectrum, far from ideas and

expressions, is trademark law, which protects names or source identifiers. Not as

technically demanding as patent law, nor as detail-oriented as copyright law,

trademark law might seem like the least practical candidate for alternative dispute

resolution based on the “expertise factor.” However, trademark experts are better

qualified to interpret the surveys which are frequently submitted as evidence and

19 Ibid.

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understand the crucial questions of “use” and “reliability” in trademark

infringement cases. As a result, a neutral that is particularly familiar with

trademark law and the data involved is a more desirable option than the average

judge or jury. One of the most commonly cited reasons for relying on ADR in IP

disputes is its potential to save all parties a tremendous amount of money.

According to a survey conducted by the American Intellectual Property Law

Association in 2001, the average cost of an IP suit ranges from $400,000 upward.

A portion of these high costs come from the need for extensive and sometimes

expensive discovery. ADR can save money by limiting the scope of discovery, as

agreed to by both parties looking to minimize financial costs. In trademark

disputes, discovery often consists of survey evidence, which can be appropriately

limited or streamlined by a neutral or by the parties entering the mediation or

arbitration. These surveys can often be prohibitively expensive.

In addition to monetary concerns, IP lawsuits may take a long time to litigate,

which can have adverse effects on a company’s business. It is crucial in patent

disputes that a speedy resolution is found because the patent at issue could

become obsolete or invalid before the resolution of a lengthy trial or discovery.

Although businesses locked in copyright and trademark disputes do not face the

types of dangers typical of a lengthy trial, there is still a genuine concern for swift

resolution. Because trademarks are utilized primarily in advertising, there is a need

for immediate resolution to prevent companies from experiencing devastating

financial setbacks. ADR also saves time by allowing the parties to begin

negotiations immediately, without having to wait months or years to appear on a

court docket.

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R E A S O N S T O C O N S I D E R A D R M E C H A N I S M S I N R E S O L V I N G I P D I S P U T E S

Intellectual property litigation is frequently more complicated and difficult to

comprehend than other types of litigation. Intellectual property disputes tend to

be large and complex and often involve high stakes. Resolving these conflicts

through traditional litigation processes can sometimes be detrimental to the

business interests of both sides of the dispute. The major disadvantages of

litigating these disputes can be the (1) prolonged time to resolution (2) high cost

(3) inflexibility of the result (4) lack of control over the outcome (5) confidentiality

(6) negative publicity and (7) harm to a business relationship.

2 . 1 QUI CK & EF FI CI EN T RES OL UT IO N

The IP litigation may take years to resolve. “The amount of time it takes to

litigate a case is incompatible with our present commercial environment.

According to James F. Henry, President of the Center for Public Resources, ‘In an

era when product lives are measured in months and litigation is measured in

decades, you can’t afford litigation.”20 While litigation can range from a year and a

half to upwards of twenty years in intellectual property lawsuits, ADR

mechanisms are designed to end in a timely fashion. It is rare to have even a

complex intellectual property dispute last for over a year. In many forms of ADR,

the parties and the neutral(s) can agree to discovery and timelines without the

rhetoric of court dockets and formal requests. Moreover, because the number of

hours spent on the dispute is decreased, attorney’s fees are typically decreased

20 Kevin R. Casey, Alternative Dispute Resolution and Patent Law, 3 FED. CIR. BJ. 1 (1993); Tom Arnold, Patent Alternative Dispute Resolution Handbook 1-3 (1991) (quoting Deborah L. Jacobs, Controlling Litigation Costs With a Neutral Third Party, N.Y. TIMES, Sept. 23, 1990, at 12).

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proportionally. Much of the benefit of an early ADR process stems from

opposing counsel and clients focusing on the case in preparing for ADR and from

communicating with each other at the ADR session. Without the ADR process,

they may not have focused on the case or communicated with the other side until

much later in the litigation process.

2 . 2 CO S T EFF I C I EN T

A case may settle in ADR before the parties incur most of the expenses of

discovery, motions, trial preparation, and trial. Although for many large

corporations involved in multi-million dollar intellectual property litigation, cost is

not typically the overriding factor but for many small to medium-sized companies,

and to individuals, cost is often paramount. Because the parties can structure the

process to meet their needs, it is easier for them to also control the process costs,

as well as the cost of the outcome. Again, even when the case does not settle early,

the litigants may save money by narrowing the issues and reaching agreement

about more focused and efficient conduct of the case.

Intellectual property cases are particularly expensive to litigate because they

tend to be both “fact-intensive” and “expert-intensive.” “Typically, IP cases tend

to be fact-intensive, involving many issues, each of which is complex.”21 As a

result, these cases entail costly discovery and often require the retention of

numerous experts on patents and damages. The cost to try and to appeal a patent

case in the United States typically exceeds a million dollars per side, and not

infrequently surpasses $15 million. Thus, even the winner loses.22 According to

the AIPLA (American Intellectual Property Law Association) 1995 Economic

Survey on estimated costs of litigation, the median cost of litigating a patent suit

through trial in California is $1,002,000, while the median cost of litigating a

trademark infringement suit through trial is $401,000 and a copyright infringement

suit is $325,000. In addition to out-of-pocket expenses, litigation entails the

21 Margaret F. Anderson, Intellectual Property Mediations: Special Techniques for a Special Field, 3 TEX. INTELL. PROP. L.J. 23,24 (1994) 22 Ibid; Arnold, supra note 20, at 1-4

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opportunity cost of requiring company owners or employees to spend

considerable amounts of time away from their business—in retrieving and

reviewing documentary evidence, deposition, and preparing for and participating

in trial. Often the individuals who must spend the most time away from work are

those whose skills are the most critical to the on-going business.

2 . 3 F L EXI B I L I T Y O F TH E R ES U L T

Litigation often yields inflexible results due to the limits on the nature of the

relief that a court or jury can grant. “A court can give, or refuse, an injunction, and

can give, or deny, monetary relief, the amount of which may vary. In most cases a

judge has very little room for creativity when issuing a judgment. Most judgments

simply announce who won and how much money, if any, will change hands.”23

Generally, one side wins and the other loses. Therefore, the result fails to take into

account the business interests or technological concerns of the parties. Also,

traditional litigation cannot easily be tailored to fit unique situations. Instead, it

“tends to force disputes into a one-size-fits- all structure.”24

2 . 4 CON TR O L O V E R P R O CES S & R ES U L T

In litigation, those who are most at risk, such as the owners and management,

lack control over both the process and the outcome. Instead, decision-making

authority is vested in judges who “do not understand the relevant business or

technology.”25 “Traditional litigation excludes business-driven solutions in favor

of purely legal alternatives.”26 The decision rendered in litigation might not be

limited to damages, but might also dictate what a business is or is not permitted to

do. ADR generally permits the disputants to maintain some control over both the

23 Wayne D. Brazil, A Close Look at Three Court-Sponsored ADR Programs: Why They Exist, How They Operate, What They Deliver, and Whether They Threaten Important Values, 1980 U. CHI. LEGAL F. 303, 325 [hereinafter Brazil, A Close Look] 24 Victoria A. Cundiff, Companies are Seeking Litigation Alternatives; They Say ADR Can Be Effective in Intellectual Property Disputes, 15 NAT'L L. J., May 17, 1993, at S25 25 Ibid.. 26 Ibid.

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process and the result.27 The parties can choose an ADR process that is suitable to

them and their case, and tailor the process to meet the specific needs of their case.

Since a resolution is reached only if all parties agree, the result is far more

predictable than submitting a case to a judge or jury.28

2 . 5 CO N F I D E N TI AL I TY

Companies with many cross-licensed goods may desire to keep the ADR

processes secret to protect the value of licenses not at issue. If the dispute

involves trade secrets, special precautions may be taken to ensure that confidential

information remains that way. Mediated settlement terms and arbitration awards

may be kept secret, with the neutral(s) bound by confidentiality agreements. Most

ADR processes are cloaked in confidentiality.29 Thus, the details of the

proceedings and any settlement reached remain confidential. Confidentiality may

be important to the litigants in intellectual property cases because it enables them

to keep technology and financial matters out of the view of competitors, media, or

the general public.30 Parties may thus avoid negative media publicity and the

resulting public embarrassment.31

2 . 6 M A IN TAI N E D , I MP RO V E D O R N EW BU S I N ES S

R EL AT I O N S H I PS

ADR fosters direct communication between the principals to a dispute. Thus,

ADR better enables the parties to maintain or improve an existing business

27 This advantage is not necessarily true of private, binding arbitration. Often the parties agree in a contract to invoke the services of a particular provider of binding arbitration, without knowing either the nature of the dispute that might arise or the rules of the provider. “Enlisting such help without determining whether the organization’s general rules are suitable for the particular dispute forfeits one of the chief benefits of alternative dispute resolution—the ability to select and craft the best-suited procedures.” Cundiff, supra note 24, at S25. 28 Cundiff, supra note 24 29 Casey, supra note 20, at 5 [“ADR hearings usually do not yield transcripts or written opinions in which trade secrets or other confidential information may be compromised (or in which ‘dirty linen’ of a loss is aired).”] 30 Ibid, at 5 31 Ibid.

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relationship, or even create a new relationship.32 “Since the parties themselves

control the outcome, it is less likely that they will be dissatisfied with any new

relationship formed through mediation.”33 These relationships may further the

business interests of each side.

2 . 7 A VO I D I N G L O CAL C O RR U P T I O N O R A N U N D ER-

DEV EL OP ED L E GAL SYSTEM

Companies frequently would like (or are required) to use or license their IP

and know-how or trade secrets to their partners or joint venturers in less-

developed nations, but, because of the unreliability or corruption of the local

judiciary in the nation, they are concerned about the potential consequences of the

transaction should a dispute arise. Private contractual mechanisms of dispute

resolution can help reduce this risk by substituting in many of these nations for

the unreliable or failed public mechanisms. The success of the substitution,

however, likely will turn on whether: (i) the less-developed nation has acceded to

the 1958 United Nations Convention on the Recognition and Enforcement of

Foreign Arbitral Awards (i.e., the New York Convention), which essentially

requires the nation to enforce qualifying arbitral awards; (ii) the less-developed

nation has enacted a modern national arbitration law, similar to the UNCITRAL

Model Law on Arbitration, that would allow the arbitration to occur within the

territorial boundaries of the less- developed nation and still enjoy the reliable

award-enforcement rules of the New York Convention; and (iii) the parties to the

transaction have included a broadly encompassing written arbitration agreement in

the contract governing their transaction.34

32 William F. Heinze, Patent Mediation: The Forgotten Alternative in Dispute Resolution, 18 AIPLA Q.J. 333, 346 (1991) 33 Ibid. 34 Brazil, A Close Look, supra note 23

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2 . 8 EN F O RC EA B I L I TY O F AW A RD S

Arbitral awards, and mediated settlements that are memorialized in the form

of arbitral awards, typically will be enforced by courts around the world with far

greater ease and reliability than judgments rendered by foreign public courts. This

is the result of two relatively recent developments.35 First, over 120 nations,

including India (essentially all nations that engage in international trade) have

acceded to the 1958 New York Convention, which places strict limits on the

reasons for which an acceding nation may refuse to enforce a qualified arbitral

award. Arbitral awards, as a result, have great international currency. Second,

many nations have enacted modern national arbitration laws that favor the arbitral

resolution of commercial disputes, and that, like the New York Convention,

strictly limit the reasons for which a court may refuse to enforce even a

domestically- rendered arbitral award.36

35 A contractual “forum selection clause” (i.e., a contractual clause designating a single national court as the place for the resolution of any disputes, to the exclusion of all other possible jurisdictions), as opposed to an arbitration clause, provides some of the same certainty in cross-border transactions that I am suggesting arises from contractual arbitration clauses. However, arbitration clauses usually are preferred by international commercial parties over forum selection clauses because arbitration clauses typically provide greater predictability with respect to several matters in addition to the place of the forum. Some of the additional comparative advantages include: (i) arbitration provides a neutral forum rather than one of a particular nationality; (ii) because of the New York Convention and the proliferation of pro-arbitration national arbitration laws, arbitral awards typically are enforced more easily and reliably than judicial judgments (particularly when the judicial judgment has been rendered in a nation other than the nation of enforcement); (iii) national courts, unlike arbitration tribunals, often are reluctant to enforce the IP laws of another nation; and (iv) an arbitration clause allows the parties to control the language of the proceedings as well as other important procedural matters. 36 Brazil, A Close Look, supra note 23

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R E A S O N S T O A V O I D A D R M E C H A N I S M S I N I P D I S P U T E S

ADR is not suitable for all kinds of cases. It would most likely be a bad

solution in piracy and counterfeit cases. These cases often involve an element of

criminal behaviour, which in turn means that they require some measure of

‘punishment’.37

If one party or both parties are in need of a legal precedent, ADR is not the

best of options. Only court judgments are public and always based on the law.

Since ADR is interest-driven and not rights-driven, there is a risk that the stronger

party coerces the weaker party into an unbalanced settlement. This risk is also

present in traditional litigation in (pre-trial) settlement negotiations. One could

perhaps say that the risk of coercion is to some extent higher the more emphasis

is put on negotiations and other forms of ADR. Possibly some of the risk could

be mitigated through the use of good mediators.38

There are several disadvantages of using any form of ADR in trademark

disputes. One major problem with ADR is that there is usually no direct appellate

review. If a party is left dissatisfied, it can bring the case to court to be heard de

novo, which means many of the costs which were supposed to be avoided are

reintroduced. Another important factor is that third parties cannot be compelled

to participate, meaning it may be difficult to get some witnesses or experts to

testify. Also, there are times when trademark plaintiffs are interested in

successfully litigating in order to send a deterrent message to potentially infringing

third parties. ADR may not offer this effect because of its confidentiality and its

lack of precedential value. Perhaps the critical weakness of using ADR in

37 Marcus Norrgård, International IP Infringements & ADR at www.iprinfo.com/tiedostot/4oVZGtM4.pdf (last accessed March 20, 2007) 38 Ibid.

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trademark disputes is the inability to obtain a ‘permanent injunction’, an award

often sought in trademark infringement cases. From a purely economic

standpoint, these considerations may not be as important in cases involving brand

extensions as they are in traditional trademark cases.

If ADR fails and the parties go to trial, the total costs of dispute resolution

would be higher than if only litigation had been conducted. This is a valid point,

but since the success rate of ADR may be as high as 80 % there is reason to take

the risk of higher costs.39

ADR would not solve the problem of multiplicity of litigation in all cases.

There is no idea in consolidating proceedings to ADR if unrelated infringers

infringe the same IP right in different countries. There is no economy of scale in

this instance. But the best result would be achieved if the same infringer (or a

group of companies) infringe by using the same infringing material in different

countries. Then all these infringements can be dealt with at one time.40

3 . 1 CON CE RN A BO U T T H E N E E D F O R E M E RG E N CY

I N JUN CT I VE R E LI EF

An IP rights holder may believe that the complete protection and vindication

of the rights depends on the availability of immediate injunctive relief (e.g., a

Temporary Restraining Order or other form of injunction forbidding the use or

disclosure of the IP), and that such relief is more likely obtained from a public

court rather than from an arbitration tribunal. This perception suggests an

exception to the usual rule that arbitration and ADR are likely to result in speedier

resolutions of IP claims than public court litigation. Of course, injunctive relief

also may be available from an arbitration tribunal in the form of a “provisional” or

“interim” order authorized by the procedural rules to which the arbitration is

subject, or from a public court before the arbitral tribunal has been constituted,

pursuant to special provisions in a nation’s arbitration law authorizing such relief.

39 Ibid. 40 Ibid.

18

However, with respect to this latter possibility of pre-arbitration judicial relief,

a small minority of courts in the United States refuse to provide such interim relief

on the grounds that judicial involvement of any kind in an arbitration – including

the issuance of injunctions before an arbitral panel is formed – violates the

provisions of the Federal Arbitration Act and the New York Convention requiring

courts to refer to arbitration any disputes that are within the scope of a valid

written arbitration agreement.41 Although this is a distinctly minority position, this

issue should be anticipated and addressed in any arbitration clause governing

disputes in which one or more of the parties believes that injunctive relief may be

important.

3 .2 TH E S TRA T E G IC N EED FO R P RE C E D EN T O R

PUBL I CITY

There are times when an IP rights holder or an alleged infringer may desire a

complete and public vindication of its rights. For example, an IP rights holder

about to embark on a series of adversarial license negotiations may believe that the

benefits of a favorable public judicial vindication of its rights (and the ability to

control the court in which vindication is sought42) outweighs the risk of no

vindication or an adverse ruling. Similarly, an alleged infringer with an allegedly

infringing product may desire a complete and public vindication of non-

infringement as the only effective way to remove consumer doubt about the

product in question. Similar strategic purposes also may counsel against ADR for

IP rights in other circumstances.43

41 Lucille M. Ponte and Erika M. Brown, Resolving Information Technology Disputes After NAFTA, 7 Tul. J. Int’l & Comp. L. 43, 52-54 (1999), and, John A. Fraser III, Congress Should Address the Issue of Provisional Remedies for Intellectual Property Disputes Which Are Subject to Arbitration, 13 Ohio St. J. of Dispute Resol. 505 (1998); David Plant, Arbitrability of Intellectual Property Issues in the United States, 5 Amer. Rev. of Int’l Arb. 11, 23-24 (1994) 42 In other words, the prospective licensee, rather than the IP rights holder, may be able to choose the court if the IP rights holder postpones action and risks a declaratory judgment lawsuit filed by the prospective licensee, presumably in a venue that the prospective licensee prefers. 43 Peter K. Yu, Toward a Nonzero-Sum Approach to Resolving Global Intellectual Property Disputes, 70 U. Cinn. L. Rev. 569, 596 (2002); and, Carmen Collar Fernandez and Jerry Spotter, International Intellectual Property Disputes: Is Mediation A Sleeping Giant?, 53 Dispute Resol. J. 62, 64 (1998); Philip J. McConnaughay, The Risks and Virtues of Lawlessness: A ‘Second Look’ at International Commercial Arbitration, 93 N.W.U. L. Rev. 453, 495-498 (1999).

19

P O P U L A R A D R M E C H A N I S M S S U I T A B L E F O R I P D I S P U T E S

There are well over sixteen distinct ADR processes currently in use. Many

of these processes have been developed as hybrids from three basic models:

processes involving a neutral, non-decision-maker (mediation), processes

involving only the disputing parties (negotiation) and processes involving a

decision-maker (arbitration).

4 . 1 MED I A T I O N

Mediation, which is derived from the Latin ‘medius’, or middle, is a facilitated

negotiation. A neutral third party, the mediator, creates a productive environment

for negotiation. “Often, parties who would not settle on their own come to a

resolution because a neutral person, uninvolved emotionally, manages the

process.”44 A skilled mediator knows how to promote communication and break

impasse. Unlike a conciliator, who is not necessarily neutral, a mediator must

always remain impartial. Mediation is appropriate for most intellectual property

cases; especially those where benefits for maintaining ongoing business

relationships are important, such as in most licensing situations.

Probably the most popular ADR technique used in intellectual property

disputes is mediation. Meditation is a process whereby the parties meet, possibly

face to face, to discuss their relative positions with a neutral. The mediator, or

neutral, may be agreed-upon between the parties, or may be appointed by a

process defined by the parties. In meditation, the actual parties themselves, not

just the attorneys, often negotiate directly. The process is not binding, and its 44 Nancy Neal Yeend and John Paul Jones, Making Sense Out Of ADR Alphabet Soup, ORANGE COUNTY LAWYER, August, 1994 at 33.

20

success depends on the willingness of the parties to participate. Mediation can be

used as part of a greater dispute resolution process that may even include

litigation, or as a stand-alone dispute resolution mechanism.45

Mediators’ styles can vary greatly; some are skilled at empowering the parties

to develop their own creative and meaningful solutions, while other mediators are

directive and permit little face-to-face negotiation between the parties. Since there

are few skilled mediators who are fluent in current technology areas and who have

an appreciation or understanding of the applicable intellectual property law, it is

often appropriate to use the co-mediation model. This model enables the parties

to enjoy the benefit of the neutrals being skilled, experienced, and informed with

respect to the mediation process, the technology area, and the applicable law.

Although the hourly rate is higher for co-mediation, the process often takes less

time, and results in a lower total cost.

4 . 2 N EG O T I AT I O N

Negotiation is always available to participants in a dispute, and is often an

excellent process. Negotiation may enable disputing parties to construct an

agreement without using any other form of ADR or finding it necessary to file a

lawsuit. Negotiation skills are used on a daily basis by most intellectual property

attorneys. This process provides an orderly method of defining a problem,

outlining the interests which must be met, and persuading others to agree to a

resolution.46 In unassisted negotiation the lawyers negotiate with each other in an

effort to resolve the case.47 This negotiation often occurs late in the case,

sometimes at “the courthouse steps” on the eve of trial. Although lawyers will

generally consult with their clients regarding their settlement position and to relay

their adversary's settlement offers or demands, the clients sometimes do not

45 Steven J. Ellman, Problems in Patent Litigation: Mandatory Mediation May Provide Settlements and Solutions, 12 Ohio St. J. on Disp. Resol. 759, 770-1, 774 (1997). 46 Supra note 44. 47 Brazil, A Close Look, supra note 23, at 328.

21

actively participate in these negotiations.48 Assisted dispute resolution processes

can help the parties overcome various barriers to settlement.49

4 . 3 AR BI TR A T I O N

Arbitration is the most formal of the many different ADR processes. Although

the traditional rules of evidence are relaxed at arbitration, the parties attempt to

convince the arbitrator or arbitrators of the merit of their positions. Decisions by

the arbitrator may be either non-binding (advisory) or binding. Binding decisions

have the same effect as a decision by the court. In fact, an arbitrator’s decision

may have more impact than a judge’s ruling. A judge’s decision may be overturned

for a variety of reasons, but an arbitrator’s decision can only be overturned on

limited grounds.50 A mistake in fact or law by the arbitrator is insufficient grounds

to overturn an award. Arbitration is usually more structured than mediation, and

the parties may opt to have one or three panelists decide the issues. Often, the

terms of binding arbitration are set out ahead of time in the license agreement or

in another agreement by way of an arbitration clause. An arbitration agreement or

clause will typically include a method for determining the panel, the applicable law,

the location of hearings, and a list of issues or any exceptions to issues that may be

arbitrated. Intellectual property arbitration awards may be enforced in a state

court.

4 . 4 EAR L Y N EU T RAL E V A L U A T I O N ( EN E)

Particularly useful in expensive patent and licensing disputes, early neutral

evaluation (“ENE”) occurs early in litigation. Each party presents a brief and then

orally argues an abbreviated version of its case to the evaluator (who is a skilled

48 Ibid. at 328-30. (Even when the lawyers succeed in settling the case through private negotiation, the process and the result may be unsatisfactory to the litigants. The various shortcomings of purely private negotiations include inefficiency, exclusion of clients, and lack of external checks on abuses of power by the attorneys or parties. These shortcomings may not block negotiations but they may increase costs, delay the initiation and completion of negotiations, and compromise the reliability of the discussion.) 49 Robert H. Mnookin, Why Negotiations Fail: An Exploration of Barriers to the Resolution of Conflict, 8 OHIO ST. J. ON DISP. RESOL. 235, 235-49 (1993). 50 Supra note 44

22

litigator, familiar with the relevant legal issues) with all attorneys and parties

present. The ENE may ask questions of the attorneys and parties. After the

session is complete, the ENE prepares a summary for the parties, outlining who is

likely to win on the merits and projecting the cost of attorney’s fees if the case

should continue through litigation. The ENE shares this information with the

parties and may help to facilitate mediation, if requested.

4 . 5 MI N I- TR I AL

A mini-trial is a mediation derivative, and is not an actual trial. This process is

ideally suited for disputes between business entities involving patents, licensing,

trademarks, trade dress, or copyright issues. One corporate decision-maker from

each side of the dispute (e.g. a CEO, President or CFO) listens to presentations.

The neutral third party, referred to as an advisor, manages the process. The

corporate decision makers and the advisor listen to abbreviated presentations and

evidence summaries from each side. “Following all of the presentations, direct

negotiations take place between the executives during which the advisor may or

may not be present. The advisor may manage the negotiation process, and failing

agreement between the parties, may be asked to give an opinion.”51 “It is not

uncommon for the parties then to negotiate further and on the strength of the

advisor’s opinion, to reach settlement.”52

In India, in a mini-trial, the parties are required to present their cases with or

without evidence to a tribunal consisting of Senior Executive of the parties who

are generally not involved in the transaction in dispute. A neutral person is

appointed as a Chairman of the Tribunal. Parties are given limited time to make

presentation before the Tribunal and thereafter the Tribunal makes a non-binding

evaluation. This evaluation becomes a basis for Negotiations or Conciliation

between the parties for settlement of the dispute at a reduced cost and time.53

51 Thomas J. Klitgaard & William E. Mussman, III, High Technology Disputes: The Minitrial as the Emerging Solution, 8 SANTA CLARA COMP. & HIGH TECH. L. J. 1 52 Supra note 44 53 Ashwini Kumar Bansal, Arbitration & ADR, Universal Law Publishing Co. Pvt. Ltd., Delhi, 2005 Edn, p. 41

23

R O L E O F W I P O I N R E S O L V I N G D I S P U T E S B Y A D R M E C H A N I S M S

Despite a general consensus that ADR has many advantages over litigation,

such as time and cost savings, many practitioners still resort to the court system to

resolve their disputes. When clients have an international intellectual property

dispute, the court system imposes particular burdens on the litigants, including a

need to litigate in numerous countries, a lack of judicial technical sophistication,

and a lack of adequate confidentiality safeguards. In this note parties should first

resort to ADR rather than litigation to resolve their international intellectual

property disputes. If the administering institution is truly international and

experienced in intellectual property, ADR may overcome many of the difficulties

parties face litigating their international intellectual property dispute in the courts.

The World Intellectual Property Organization (“WIPO”) Arbitration and

Mediation Center meets these criteria, and practitioners should consider using it to

resolve their international intellectual property disputes.

Recognizing the growing need for this type of intervention, the World

Intellectual Property Organization (“WIPO”) established an Arbitration and

Mediation Center (“the Center”) in Geneva, Switzerland in October of 1994.54

The WIPO Center provides an illustrative and comprehensive array of ADR

services. The first of these services, mediation (also known as conciliation), is a

procedure in which a neutral intermediary, the mediator, endeavors, at the request

of the parties to a dispute, to assist them in reaching a mutually satisfactory

settlement.55 Two basic models of mediation exist and the WIPO rules are

54 The Services of the WIPO Arbitration Center: International Center for the Resolution of Intellectual Property Disputes 8, World Intellectual Property Organization (WIPO) Doc. 445(E) (1995) [hereinafter Services of the (WIPO)] 55 Ibid. at 23-25

24

designed to allow parties the flexibility to choose between them according to the

particular needs of the dispute.56 In the first model, the mediator acts as an

evaluator of the dispute and suggests an appropriate outcome.57 In the second, the

mediator operates to facilitate resolution by the parties.58 Under either model, the

mediator does not have the power to impose a settlement on the parties.

Furthermore, either party may abandon the mediation at any stage prior to the

signing of a settlement agreement.

The second service offered, arbitration, is a procedure in which a dispute is

submitted, by agreement of the parties, to an arbitrator or to a tribunal of several

arbitrators that renders a binding decision.59 In contrast to mediation, once the

parties have freely agreed to submit a dispute to arbitration, a party cannot

unilaterally withdraw, and the decision is binding on the parties.

The third service is expedited arbitration, which is a modified version of

traditional arbitration. Modifications such as the use of a sole arbitrator (rather

than a tribunal of several arbitrators), shorter timetables, and condensed hearings

help facilitate faster and less costly settlements.60

The fourth service sequentially combines both mediation and arbitration. The

parties must agree to attempt first to resolve the dispute through mediation. If

they cannot reach a settlement through mediation within the period of time

designated by the parties (typically sixty or ninety days), either party may then refer

the dispute to arbitration.61

Finally, the Center is considering the introduction of a new service—

emergency interim relief.62 Currently, those seeking interim relief, such as a

preliminary injunction to halt a patent, copyright, or trademark infringement or to

56 Francis Gurry, Resolving Intellectual Property Disputes through Arbitration and Mediation 8-9 (Apr. 24-26, 1996) (unpublished paper prepared for the Conference on Intellectual Property Rights in the Czech Republic, on file with the Stanford Law Review) 57 Ibid. 58 Ibid. 59 Services of the WIPO, supra note 54, at 26-27. Because arbitration is binding, it raises more legal questions than other types of ADR and is most like traditional litigation. 60 See id. at 32-34 61 See id. at 35-37 62 Proposed WIPO Supplementary Emergency Interim Relief Rules, WEPO Doc. WIPO/ARB/ DR/5 (Apr. 19, 1996)

25

prevent the disclosure of a trade secret, must wait until a tribunal can be convened

or must seek an injunction through the courts. The new proposal would create a

standby panel of arbitrators to ensure the appointment of an emergency arbitrator

on twenty-four-hours’ notice, allowing immediate relief without forfeiture of the

advantages of ADR, such as confidentiality.63

Any person having legal capacity, regardless of national residence or affiliation,

can access WIPO’s services. For example, the Center does not require that

participants be affiliated with a country that is a party to a WlPO-administered

treaty.64 To refer a dispute to the Center, parties may use one of two possible

means.65 The most common method is by mutual agreement embodied in a

contract clause providing that all future disputes arising under that contract will be

submitted to a Center-administered procedure.66 Those parties that are not in a

contractual relationship with one another or who did not choose to insert an

arbitration clause into their agreement can refer their disputes to the Center by

mutual agreement. An agreement between parties to use ADR to resolve an

existing dispute is called a “submission agreement.”67

63 Ibid. at 2, Annex III, art. IV. This procedure would give a party the advantage of obtaining one ruling enforceable across many different jurisdictions. See id. at 3. 64 See Services of the WIPO, supra note 54, at 18. 65 See id at 19. 66 WIPO’s recommended arbitration clause states: Any dispute, controversy or claim arising under, out of or relating to this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators] or [a sole arbitrator]. The place of arbitration shall be ... The language to be used in the arbitral proceedings shall be... The dispute, controversy or claim shall be decided in accordance with the law of. . . WIPO Mediation Rules, WIPO Arbitration Rules, WIPO Expedited Arbitration Rules, Recommended Contract Clauses and Submission Agreements 74, WIPO Doc. 446(E) (1995) [hereinafter WIPO Rules]. For model clauses for other types of ADR, see id at 73-75 67 Services of the WIPO, supra note 54, at 19. The WIPO's recommended submission agreement clause for arbitration states: We, the undersigned parties, hereby agree that the following dispute shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules: [Brief description of the dispute] The arbitral tribunal shall consist of [three arbitrators] or [a sole arbitrator]. The place of arbitration shall be ... The language to be used in the arbitral proceedings shall be ... The dispute shall be decided in accordance with the law of. . . WIPO Rules, supra note 54, at 76.

26

S U G G E S T I O N S & C O N C L U S I O N

The advantages of ADR, the backlog in many court systems, and the growth

of the international marketplace have helped fuel a global “warming” toward the

use of ADR. The most important advantages—reduced time and cost and a

neutral forum—take on increased significance in the field of intellectual property

because intellectual property litigation tends to be lengthy, costly, and implicates

the laws and residents of several jurisdictions simultaneously. These advantages

more than compensate for any shortcomings due to the use of streamlined

procedures.

The creation of the WIPO Arbitration and Mediation Center has resulted in a

valuable asset for all those in the international intellectual property industry. The

Center provides a truly international backdrop for a comprehensive array of ADR

services, all of which were designed with intellectual property interests in mind.

All forms of ADR require mutual consent from the parties. In contractual

disputes, the contract can provide for negotiations, mediation, arbitration etcetera

or any combination of these. The requirement of mutual consent does in

mediation present even though mediation has begun: a party is at liberty to walk

out at any point of mediation.

In infringement cases the requirement of mutual consent decreases the parties’

interest for mediation. Since there as a rule is no prior contract between the

parties in which the method of dispute resolution is provided for, it is quite

unlikely that such a submission agreement would be concluded after the rights

holder has made his allegation about infringement. Usually, in that case the

infringer and the rights holder have diverging interests: a quick and easy solution

to the dispute is in the traditional thinking not in the interest of the alleged

27

infringer. In some cases, however, both parties may have an interest in opting for

mediation even in infringement cases.

This kind of voluntary mediation is open for the parties already today. For

instance, the WIPO Arbitration and Mediation Centre offers ADR services, which

parties to a dispute may use. Also, the International Trademark Association INTA

and the CPR Institute for Dispute Resolution offer ADR in trademark and unfair

competition disputes.68

The problem is how to stimulate the use of ADR in non-contractual disputes,

and especially IP infringement cases.

First, through education ADR can be brought to the attention of interested

parties, companies and counsel. Second, the CPR Institute for Dispute Resolution

has developed a fascinating ‘Corporate Policy Statement on Alternatives to

Litigation’. According to CPR, over 4000 companies (including Coca-Cola,

Microsoft and Pfizer) have adopted the ADR pledge. The pledge obliges

companies that have taken the pledge to seriously explore negotiation, mediation

or other ADR processes in conflicts arising with other signatories before pursuing

full-scale litigation. The pledge reads as follows:

In the event of a business dispute between our company and another company

which has made or will then make a similar statement, we are prepared to

explore with that other party resolution of the dispute through negotiation or

ADR techniques before pursuing full-scale litigation. If either party believes

that that dispute is not suitable for ADR techniques, or if such techniques do

not produce results satisfactory to the disputants, either party may proceed

with litigation.

This pledge is to be signed by the company CEO and Chief Legal Officer and

faxed to CPR. There are also similar pledges for law firms and entire industries.

The pledge, like a regular contract, is designed to provide for ADR before a

dispute arises. The problem with the pledge, like with all voluntary forms of

68 Alternative Dispute Resolution, http://www.inta.org/adr/ (last accessed 10th March 2007)

28

dispute resolution, is that it requires that the companies make the statement or

concludes a contract.

Third, in addition to voluntary ADR there are also mandatory (or compulsory)

ADR, which in essence means that parties are obliged to try some ADR technique

before the case is tried in court. The court would thus order the parties to engage

in ADR proceedings before the trial on the merits. If the parties would refuse, the

court could take this into account in the division of legal costs or find contempt

of court or the like.

ADR in the form of binding and final arbitration (or the like) is not proposed

here. The proposal here includes only mandatory mediation, since it is non-

binding and would thus pose smaller problems to the constitutions of the

countries participating. In international, cross-border, multiple IP litigation

mandatory ADR could be a viable solution (subject to the constitutions of the

signatory states).

ADR can be mandatory in whole or in part. First, mandatory ADR could

require the parties to reach a solution in the ADR proceedings, that is, it is

mandated that the parties must take part in ADR until an ‘amicable’ settlement is

reached. This form of mandatory ADR is not advisable. Negotiations and

settlements must be the end result of voluntary negotiations. Second, the

mandatory character can mean that the parties must take part in ADR for a certain

number of sessions or for a certain period of time. Here, no result is required.

Third, the least invasive form of mandatory ADR would be that the parties must

take part only in the first session and let the mediator give his opening

presentation. It is possible, even likely, that the third alternative could work.

6 . 1 PROPOSAL FOR ADR CONVEN TI ON

Mandatory ADR could be provided for in an international convention even if

a World Patent, International Copyright Code or a jurisdiction convention would

prove to be controversial. The convention would simply provide that courts (first

instances) in all contracting states would order the parties to take part in ADR

29

(mediation) before trial at least in multiple litigation cases. Even if the other

solutions (World patent etcetera) would become reality, the convention on ADR

could be worthwhile to pursue as a means of further enhancing the effectiveness

of the procedural system.

The convention would not necessarily have to stipulate on what kind of ADR

should be used. Instead the question could be left entirely to the parties. If no

agreement on the type of ADR has been concluded within a time limit set by the

court or by the convention, the parties would have to take part in one mediation

session or alternatively the court could decide to initiate some other kind of ADR

procedure.

Concluding Remarks

There is an impending litigation explosion in our commercial world resulting from the trademark and brand expansions initiated by many corporations today. Because trademark law offers the potential for infinite protection, it offers the strongest economic promise for IP rights in the future. Furthermore, the increasing value of brands has led many companies to focus on these more vigorously than improving the quality of their products. All of this leads to the natural conclusion that lawsuits in this area of law will multiply exponentially. Mediation is the option most likely to help more parties walk away with a faster resolution and more capital left to invest elsewhere. More importantly, mediation, with its non-adjudicative, constructive methods will help commercial entities create new opportunities to co-exist and grow their respective businesses, leaving an open universe of possibilities for the future without disabling one or both parties indefinitely.

Although resolving intellectual property disputes can be technically complex,

time-consuming, resource- draining, and adversarial, ADR offers solutions that

can reduce the complexity, time, cost, and controversy. Whether private ADR

neutrals or an ADR service provider are used, neutral selection is important,

especially in complex, technical disputes. When preparing intellectual property

licensing agreements, consider including ADR clauses for some or all possible

issues that may arise.

30

Despite the challenges that face the ADR processes today, the benefits in the

long run that they are capable of generating appear to outweigh the factors that

may in the short run deter their enforcement. The diverse nature of the country’s

population defies any uniform approach or set pattern and this is perhaps the

biggest strength of the ADR mechanisms. Their flexibility and informality, the

scope they offer for innovation and creativity, hold out the promise of a great

degree of acceptability lending them the required legitimacy.

Their utility as a case management tool cannot be over-emphasized. ADR

processes provide the bypasses to handle large chunks of disputes thus leaving the

formal legal system to handle the more complex litigation. Even while they do not

offer to be a panacea for all the ills of the formal legal system, ADR processes

offer the best hope yet of complementing and helping to fortify the formal legal

system.

31

R E F E R E N C E S

ARTICLES REFERRED

1. Alternative Dispute Resolution, http://www.inta.org/adr/ (last accessed 10th March 2007)

2. Bryan Niblett, Arbitrating the Creative, 50 DISP. RESOL. J. 64, 64 (1995)

3. Carmen Collar Fernandez and Jerry Spotter, International Intellectual Property Disputes: Is Mediation A Sleeping Giant?, 53 Dispute Resol. J. 62, 64 (1998)

4. Dale A. Nance, Forward: Owning Ideas, 13 HARV. J. L. & PUB. POL’Y 757, 757 (1990)

5. David Plant, Arbitrability of Intellectual Property Issues in the United States, 5 Amer. Rev. of Int’l Arb. 11, 23-24 (1994)

6. Francis Gurry, Resolving Intellectual Property Disputes through Arbitration and Mediation 8-9 (Apr. 24-26, 1996) (unpublished paper prepared for the Conference on Intellectual Property Rights in the Czech Republic, on file with the Stanford Law Review)

7. John A. Fraser III, Congress Should Address the Issue of Provisional Remedies for Intellectual Property Disputes Which Are Subject to Arbitration, 13 Ohio St. J. of Dispute Resol. 505 (1998)

8. Kevin R. Casey, Alternative Dispute Resolution and Patent Law, 3 FED. CIR. BJ. 1 (1993)

9. Lucille M. Ponte and Erika M. Brown, Resolving Information Technology Disputes After NAFTA, 7 Tul. J. Int’l & Comp. L. 43, 52-54 (1999) Marcus Norrgård, International IP Infringements & ADR at www.iprinfo.com/tiedostot/4oVZGtM4.pdf (last accessed March 20, 2007)

10. Marcus Norrgård, International IP Infringements & ADR at www.iprinfo.com/tiedostot/4oVZGtM4.pdf (last accessed March 20, 2007)

11. Marcus Norrgård, International IP Infringements & ADR at www.iprinfo.com/tiedostot/4oVZGtM4.pdf (last accessed March 20, 2007)

12. Margaret F. Anderson, Intellectual Property Mediations: Special Techniques for a Special Field, 3 TEX. INTELL. PROP. L.J. 23,24 (1994)

32

13. Nancy Neal Yeend and John Paul Jones, Making Sense Out Of ADR Alphabet Soup, ORANGE COUNTY LAWYER, August, 1994 at 33

14. Peter K. Yu, Toward a Nonzero-Sum Approach to Resolving Global Intellectual Property Disputes, 70 U. Cinn. L. Rev. 569, 596 (2002)

15. Philip J. McConnaughay, The Risks and Virtues of Lawlessness: A ‘Second Look’ at International Commercial Arbitration, 93 N.W.U. L. Rev. 453, 495-498 (1999)

16. Robert H. Mnookin, Why Negotiations Fail: An Exploration of Barriers to the Resolution of Conflict, 8 OHIO ST. J. ON DISP. RESOL. 235, 235-49 (1993)

17. Scott H. Blackmand and Rebecca M. McNeill, Alternative Dispute Resolution in Commercial Intellectual Property Disputes, 47 AM. U. L. REV. 1709, 1734 (1998)

18. Steven J. Ellman, Problems in Patent Litigation: Mandatory Mediation May Provide Settlements and Solutions, 12 Ohio St. J. on Disp. Resol. 759, 770-1, 774 (1997)

19. Thomas J. Klitgaard & William E. Mussman, III, High Technology Disputes: The Minitrial as the Emerging Solution, 8 SANTA CLARA COMP. & HIGH TECH. L. J. 1

20. Thomas O. Main, ADR: The New Equity, 74 U. Cin. L. Rev. 329

21. Tom Arnold, Patent Alternative Dispute Resolution Handbook 1-3 (1991)

22. Victoria A. Cundiff, Companies are Seeking Litigation Alternatives; They Say ADR Can Be Effective in Intellectual Property Disputes, 15 NAT'L L. J., May 17, 1993, at S25

23. Wayne D. Brazil, A Close Look at Three Court-Sponsored ADR Programs: Why They Exist, How They Operate, What They Deliver, and Whether They Threaten Important Values, 1980 U. CHI. LEGAL F. 303, 325

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3. S.R. Myneni, “Arbitration, Conciliation and Alternative Dispute Resolution Systems,” 1st Edn. 2004, Asia Law House, Hyderabad

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19. http://www.icadr.org/news-speechcjhc.html

20. http://www.ielrc.org/content/n0401.htm

21. http://www.inta.org/adr/

22. http://www.iprinfo.com/tiedostot/4oVZGtM4.pdf

23. http://www.iprinfo.com/tiedostot/4oVZGtM4.pdf

24. http://www.iprinfo.com/tiedostot/4oVZGtM4.pdf

25. http://www.isdls.org/conferences_india2003.html

26. http://www.isdls.org/projects_india.html

27. http://www.laws4india.com/acts/arbitrationact/arbc2.pdf

28. http://www.spea.indiana.edu/icri/terms.htm#ENE

29. http://www.spea.indiana.edu/icri/terms.htm#ENE

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30. http://www.thehindubusinessline.com/businessline/2001/07/02/stories/040220sa.htm

31. http://www.westlaw.com

32. http://www.worldlii.org/catalog/50140.html

33. http://www1.worldbank.org/publicsector/legal/ADR%20Workshop.pdf

34. http://www1.worldbank.org/publicsector/legal/adr.htm

WI PO DOCUM E NTS

1. Contract Clauses and Submission Agreements 74, WIPO Doc. 446(E) (1995)

2. Proposed WIPO Supplementary Emergency Interim Relief Rules, WEPO Doc. WIPO/ARB/ DR/5 (Apr. 19, 1996)

3. The Services of the WIPO Arbitration Center: International Center for the Resolution of Intellectual Property Disputes 8, World Intellectual Property Organization (WIPO) Doc. 445(E) (1995)

4. WIPO Mediation Rules, WIPO Arbitration Rules, WIPO Expedited Arbitration Rules, Recommended

OTHE R RES OUR CES

1. 120th Report of the Law Commission of India on Manpower Planning in the Judiciary: A Blueprint¸ Ministry of Law, Justice and Company Affairs, Government of India (1987), 3

2. Indian Law Institute, Judicial System and Reforms in Asian Countries: The Case of India, Institute of Developing Economies, Japan External Trade Organisation (IDE-JETRO), (March 2001) 39

3. J. Venkatesan, “Panel concern over backlog in courts”, The Hindu, New Delhi, March 10, 2002, 12

4. Report on National Juridicare Equal Justice – Social Justice, Ministry of Law, Justice and Company Affairs (1977)

5. Speech by Hon’ble Mr. Justice S.P. Bharucha, Chief Justice of India on 26th November 2001 (Law Day) at the Supreme Court” (2001) 8 SCALE J-13 at J-14.