06-International IP Rights Enforcement-ADR-new


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Slide 1: 

International Intellectual Property Protection and Commercialization International IP Rights Enforcement – ADR & National Enforcement

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International Intellectual Property Protection and Commercialization International IP Rights Enforcement – ADR & National Enforcement

Introduction : 

Introduction Both business and legal communities come to realize that IP disputes are actually problems to be solved rather than contests to be won or lost, and with such perspective, alternate means to resolve conflict become more appealing. At a time business has become global but courts still remain national, there is an increasing need to foster ADR to be less dependent upon variants of national regimes

Difficulty Of IP Rights Enforcement : 

Difficulty Of IP Rights Enforcement In many countries, enforcement is difficult for IP rights owners International system is yet to improve One way to obviate this difficulty is through arbitration and mediation Courts are getting more and more involved in the matter: some progress is in sight

Tendancy To Judiciarize In IP Related Matters : 

Tendancy To Judiciarize In IP Related Matters Lack of emotions, reliability, complex system, complex problems Two-speed justice (akin medical field); concept of need Explosion of trade Arbitration and mediation to the business people’s rescue (control over process, not over outcome) Efficiency (?) of court proceedings in intellectual property disputes (costs, formalism, delays, complexity)

Arbitration And Mediation In Intellectual Property : 

Arbitration And Mediation In Intellectual Property Contractual and non-competition relationship (mere ownership of IP rights is not enough) Finality- no appeal except excess of jurisdiction To avoid risk of ambiguity or difficulty of enforcement: Foresee a complete dispute resolution clause indicating forum, rules and time frame Clarify each parties’ intentions (law and equity) Fair and equitable solution in climate of cooperation

Mediation Characteristics : 

Mediation Characteristics Facilitator Intermediary intervention brings parties to an agreement Voluntary participation: adjust differences between parties’ interests to find compromise Less formal than arbitration; Fast, low cost and confidential Private enforcement: or homologation through court

Mediation Characteristics : 

Decision is made by the parties, but does not bind them, until finally agreed or solved Each party may withdraw at any time (consensual participation) In case it fails: arbitration legal remedies Mediation Characteristics

Arbitration Characteristics : 

Arbitration Characteristics Dispute resolution or arbitration award rendered by one or several adjudicators, upon which parties have previously agreed to rely Adjudicator = intermediary, third party Equity + parties’ interests = solution Less formal than legal remedies Once is triggered, compelling mechanism (signature clause) Parties bound by decision: private enforcement or court homologation Appeal impossible (except excess of jurisdiction, blatant legal error or denial of justice) The key is how / timeline to trigger it.

Arbitration Parameters : 

Arbitration Parameters Advantages: Confidential proceedings preserve private character of IP rights (trade secrets, patents, reputation, etc.) Light procedural framework according to each party’s desires Active interaction by adjudicator Supple evidence rules Experienced adjudicators (IP rights involving a certain degree of technical knowledge in the field) Faster and more cost-effective than traditional legal remedies Helps maintain good business relationships with regards to IP rights, beyond the disputes Easier enforcement

Arbitration Parameters : 

Arbitration Parameters Limits Mediation and arbitration of IP rights are more difficult when the disputes are about: Validity (in rem) Infringement (subject matter) Concept of public interest and state policy (matters that should be tried by the Courts, not in private dispute resolution)

Arbitration Parameters : 

Arbitration Parameters To Foresee in Contractual Arrangement In order to ensure efficiency, as soon as the business relationship starts, we suggest to foresee in the contract: Procedure to resolve eventual disputes Number of adjudicators or mediators (one or three appointment by parties or choosing from existing publicly recognized roster) Roles and powers of the adjudicator Delays: triggering – process – length

Arbitration Parameters : 

Venues Recognized organizations (WIPO, NAF, ICC, AAA) Should the forum not be determined, at least provide for application arbitration procedural rules Selection of arbitrators and time frame to appoint them: Time frame to begin arbitration proceedings “Time is of the essence” clause Timeline to render decision Arbitration Parameters

Situations To Avoid : 

Situations To Avoid Situations: Copyright matter Software co-development contract Broken contractual relationship Bad language of arbitration clause: avoid the simple statement in contract that disputes will be settled by arbitration!!

Example Arbitration Clause : 

Example Arbitration Clause Practical Case: (AAA, CCI, WIPO, CCAC): Any dispute under this Agreement shall be submitted to binding arbitration in the City of […] under the rules and terms of reference then prevailing in said venue (or under the rules of a privately recognized body). The parties agree that time is of the essence : the arbitration process will start within x days from notice sent by one party and once appointed, the arbitrator(s) shall render a decision within […] delay. Decision will be final and with no appeal except if breach of natural justice or excess of jurisdiction by arbitrator. Upon decision rendered and any award granted, it may be entered and enforced in any court of competent jurisdiction.

Enforcement Of Foreign Awards : 

Enforcement Of Foreign Awards One of the greatest unknown advantages (well kept secret) United Nations Foreign Arbitral Awards Convention (1958 “New York Convention”) In Canada since 1985 (not before because of constitutional difficulties) thus allowing foreign arbitration decision to be enforced – i.e. once homologated, then becomes court judgment More than 125 jurisdictions are parties The application of the Convention in Canadian Law does not rely on its adoption by the country from where the award has been rendered Canadian Court to homologate only, not to review merit unless abuse of jurisdiction or blatant denial of justice

Enforcement Of Foreign Awards : 

Enforcement Of Foreign Awards Mere fact that award comes from trade legal relationship is enough for the Convention to apply Once arbitral award is homologated, it becomes a national judgment ready to be enforced Awards enforced irrespective of their substantive content

Conclusion : 

Conclusion Intellectual Property is present at many levels, especially with the development of technologies and represents one of the essential competition assets In the era of multilateral trade, WTO and increased globalization, IP rights travel fast and easily because of technology development, which contributes to business globalization IP rights owners face bigger and bigger markets, thus fiercer competition

Conclusion : 

Conclusion Products evolve very quickly and therefore are soon overcast by new technologies Glut of judicial courts forces IP rights owners to rely on alternative means in order to resolve their disputes Solution: find an efficient way against disputes while preserving relationships between IP rights owners and confidentiality of these rights Non-judicial resolution dispute modes such as arbitration and mediation answer these concerns and fit within the IP field

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International Intellectual Property Protection and Commercialization International IP Rights Enforcement – ADR & National Enforcement

www.HULSEYIPLaw.com : 


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