Conference Report: UIC Law Thinking Internationally about IP and ADR – What Every Lawyer & Corporate Counsel Should Know

Back on August 19, 2021, the University of Illinois Chicago School of Law’s Center for Intellectual Property (“IP”), Information, and Privacy Law, the IP Office of Singapore (IPOS), and the World IP Organization’s (WIPO) Arbitration and Mediation Center co-organized a seminar on the intersection of intellectual property and alternative dispute resolution (“ADR”) from a global perspective. Adam Ernette from UIC Law reports:

“A key theme in the Seminar was the opportunities for, and obstacles to, normalizing the use of ADR in IP cases. IP Center Director Professor Daryl Lim, Chief Executive of IPOS, Mrs. Rena Lee and Ms. Heike Wollgast, Head of the IP Disputes Sections of WIPO’s Arbitration and Mediation Center, delivered opening remarks.

Professor Lim moderated the panel discussion with Chiara Accornero (Legal Officer, IP Disputes Section, WIPO Arbitration & Mediation Center, WIPO Arbitration & Mediation Center), Hon. James Holderman (ret.) (Mediator & Arbitrator, JAMS), David Perkins (Mediator & Arbitrator, JAMS), Marco Tong (Chief Licensing Officer & Deputy IP Officer, ZTE), and Sandy Widjaja (Senior Legal Counsel, Hearings & Mediation Department, IPOS). Ms. Accornero and Ms. Widjaja put the discussion in context by highlighting the efforts of their respective offices to both increases the use of ADR programs and improve resolution efficacy.

The WIPO ADR Center handles all types of IP and technology disputes. WIPO mediators, arbitrators and experts are experienced in IP and technology. Ms. Accornero noted that WIPO ADR offers competitive fees, international neutrality and has users from around the world. The Center also provides procedural assistance in drafting ADR clauses and submission agreements and the selection and appointment of mediators, arbitrators, and experts drawn from a pool of over two thousand experts from all regions.

In the area of standard-essential patents, WIPO offers a tailored model for WIPO FRAND ADR Submission Agreements developed in collaboration with ETSI (an independent, not-for-profit, standardization organization in the field of information and communications.), telecom stakeholders, and WIPO neutrals.

Ms. Accornero touched on WIPO’s cooperation with national trademark offices, citing IPOS as an example. The WIPO Mediation framework covers all areas of IP. WIPO also works with WIPO to train mediators and in ADR outreach events.

Ms. Widjaja began by emphasizing that the courts fully support ADR. She quoted an excerpt from Singapore Chief Justice Sundaresh Menon’s 2016 speech on Shaping the Future of Dispute Resolution & Improving Access to Justice. There, Justice Menon noted that “[a]n ideal system of justice is one that delivers justice that is customized to each type of case, keeping in mind the subject matter, the parties, and the desired outcomes…In this regard, it would perhaps be timely to embrace a paradigm shift and understand “ADR” as a reference to “Appropriate Dispute Resolution” instead.”

Ms. Widjaja provided evidence of Singapore’s international recognition for its ADR regime. Queen Mary University of London’s International Arbitration Survey (2021) saw Singapore tied in 1st place with London as the most preferred seat of arbitration. The Singapore International Arbitration Centre (SIAC) is the 2nd top arbitral institution globally and the most preferred arbitral institution in Asia. SIAC boasts a specialist panel of 26 international IP arbitrators.

Ms. Widjaja also cited a case study involving a Singaporean construction company that filed opposition actions against three trademark applications owned by three commercially related entities based in Singapore, Malaysia, and Indonesia. The parties resolved all outstanding proceedings globally with the assistance of a Singaporean IP lawyer as a mediator and one-day mediation four months after commencement of mediation.

Finally, Ms. Widjaja shared the Singapore government’s recently released Singapore IP Strategy (2030). The country’s objective is to grow Singapore as a global hub for intangible assets and maintain Singapore’s top-ranked Intangible Assets/IP regime to instill confidence in investors and innovators.

The panel then discussed two important points: (1) whether ADR was right in all instances; and (2) what courts could do to increase visibility and use of ADR programs.

ADR offers the unique ability for the parties to privately fashion a form of relief rather than having limited forms of relief mandated by a court. Not only could this circumstance be better and more appropriate, but it can also be more cost-effective and at least partially removes the possibility that a court could err. However, it is not uniformly better than litigation, and there are instances where litigation may be the better course for parties to take.

The panel agreed that instead of calling ADR alternative dispute resolution, it is more accurate to call it appropriate dispute resolution. Again, this is because of the options ADR provides to parties to resolve their disputes privately. In addition, with greater ability to fashion relief and resolve differences, ADR provides a customized approach to resolving a dispute compared to the one-size-fits-all approach of the court system. But, again, the key is identifying which case is which and finding the appropriate forum to resolve the dispute.

Of course, parties ultimately decide whether to pursue mediation. So what can courts do about increasing the use of ADR services where the judge identifies a situation made for mediation and – in the case of federal litigation in the United States – would a magistrate judge suffice?

Judge Holderman noted that while magistrate judges are more than capable in most instances to facilitate mediation, they are too busy to provide the same expertise and time commitment as private ADR services. In other words, parties are more likely to work with and more capable of finding neutrals who intimately understand the law surrounding the dispute than generalist and overworked judges. Again, the panel emphasized the customization available to parties who pursue mediation.

One option available to courts is to explicitly and strongly encourage mediation. Another is to consider the strategic value of court opinions. For example, Judge Holderman recounted his overseeing the In re Innovatio IP Ventures, LLC Patent Litigation. Specifically, the parties moved for partial summary judgment on essentiality, which allowed the parties to pursue mediation presuming for the sake of mediation both validity and infringement. Had Judge Holderman ruled on either validity or infringement, it would have taken a significantly longer time and would have all but decided the case one way or the other. Instead, the parties were able to set the mediation stage and tailor a unique resolution to the facts and industry.

The program for the Seminar can be found here. In addition, the IP Center will make video highlights of the event available in due course.

Join us for our other events this fall!

IP and Tech Corporate Counsel Conference – Friday, September 17
International IP Practice Seminar (Co-Organized with WIPO and Kuhnen & Wacker) – Friday, October 8 (see Forthcoming Events for reader discounts)
IP Center Alumni & Friends Virtual Reception – Friday, October 29
65th Annual IP Law Conference – Thursday and Friday, November 4 – 5

For more information, please get in touch with Adam Ernette ([email protected])”