IP ADR Symposium in London
University College London IBIL
WIPO Arbitration and Mediation Center
Munich IP Dispute Resolution Forum (IPDR Forum)
Center for Intellectual Property and Competition Law, University Zurich (CIPCO)
Disputes in Intellectual Property (IP) are of ever-growing importance. Developments like the internet of things (IoT) and autonomous car driving are shaping up to introduce unprecedented levels of complexity in the way innovations are fostered and protected. Disputes concerning standard-essential patents and in the Life Sciences sector already pose highly complex challenges to state court systems.
As global disputes stretch national judicial systems to capacity, the resolving of IP disputes by way of alternative dispute resolution (ADR) gains traction not only as an alternative, but also as an innovative addition to traditional state court litigation. ADR mechanisms can promise an efficient way forward for technology owners and technology implementers but require an innovative approach to manage IP disputes.
To discuss opportunities and limitations of the strategic use of ADR in complex IP disputes, the University College London IBIL, WIPO AMC, the Munich IP Dispute Resolution Forum (IPDR), and the Center for Intellectual Property and Competition Law, Zurich University (CIPCO), assembled high level panels, consisting of business representatives, judges, lawyers and academics. On 1 May 2019, they met with a large audience at the at UCL Faculty of Law in London to share and exchange ideas.
Trevor Cook (Partner, WilmerHale) provided the participants with an overview of the recent FRAND case-law. He reported that a lot of FRAND disputes are resolved through arbitration and underlined that an arbitration agreement is often already incorporated in the licence agreement between the two parties. Since WIPO has issued specific procedural guidance for FRAND arbitrations, Ignacio de Castro (Deputy Director, WIPO Arbitration and Mediation Center) provided first hand insights on the course of these WIPO proceedings and discussed the possibility to combine them with mediation.
The Munich IPDR Forum FRAND ADR Case Management Guidelines assist corporate and legal decision makers in designing an efficient and strategic approach to FRAND disputes. Dr. Claudia Feller (Associate, Simmons & Simmons) and Raffael Probst (Mediator, Frankfurt) advised on the use of these Guidelines and elaborated on some of the most distinctive features, such as assistance in defining the scope of FRAND-ADR proceedings, balancing confidentiality with public policy considerations, and evaluating the possibility to appeal the awards.
Dr. Clemens Heusch (Head of European Litigation, Nokia), Dr. Ralf Uhrich (Patent Litigation Counsel, Google), Juliane Buchinski (Lead IP Litigation Counsel Europe, ZTE) and moderator Prof. Dr. Peter Georg Picht (Director CIPCO, University of Zurich) reported on the state of FRAND ADR in China, the US and Europe, and discussed possible advantages and risks of using ADR or state court litigation from a corporate perspective. They offered insights in the corporate reasoning concerning confidentiality and the role of competition law in FRAND arbitrations.
Rather than opting for ADR instead of litigation, a combination of both can be a suitable approach to manage sensitive information in FRAND disputes. Judge Randall Rader (former United States Circuit Judge and former Chief Judge of the United States Court of Appeals for the Federal Circuit), Judge Dr. Matthias Zigann (Presiding Judge, Regional Court Munich I), The Rt Hon Lord Justice Christopher Floyd, and Prof. Sir Robin Jacob (Director IBIL, UCL) tackled this issue from a judicial perspective and with practical insights stemming from extensive experience.
Shifting gears, Judge Prof. Dr. Peter Meier-Beck (German Federal Supreme Court), Annet van Hooft (van Hooft Legal), Gavin Pope (Head of Legal Global Pharmaceuticals Development, Medical Affairs & Litigation, Novartis Pharma AG) and Dr. Monika Hupfauf (Partner, Koch/Hupfauf Attorneys) focused on the effective use of mediation and arbitration in the area of Life Sciences. They revealed some common strategies and challenges that Life Science disputes share with SEP cases.
Key resources of this productive conference are available online. Make sure to follow upcoming events by visiting the websites of the UCL IBIL and the Munich IPDR Forum or let us get you up to speed by enlisting to the IPDR mailing list (4-6 mails per year).
IPDR FRAND Case Management Guidelines
London, Wednesday, May 01, 2019
Intellectual Property (IP) is of ever-growing importance in modern economies, and so are IP disputes. Increasingly, such disputes are resolved by way of alternative dispute resolution (ADR) mechanisms. The FRAND licensing of standard-essential patents, as well as the Life Sciences sector are two areas in which mediation and arbitration are prominent, promising, but also challenging in some respects.
This conference, hosted by UCL, WIPO Arbitration and Mediation Centre, the Munich IP Dispute Resolution Forum and Zurich University’s Center for Intellectual Property and Competition Law (CIPCO), addresses the key aspects of IP ADR in the SEP/FRAND and the Life Sciences area in a high-level setting. It brings together business representatives, judges, academia, and legal practitioners, providing best practice-advice and a first hand-insight on the future of IP ADR.
Prof. Sir Robin Jacob (Director, UCL Institute of Brand & Innovation Law (IBIL))
Judge Randall Rader (former United States Circuit Judge and former Chief Judge of the United States Court of Appeals for the Federal Circuit)
Judge Dr. Matthias Zigann (Presiding Judge, Regional Court Munich I)
The Rt Hon Lord Justice Floyd
Prof. Dr. Peter Georg Picht (Director, Center for Intellectual Property and Competition Law (CIPCO), University of Zurich)
Dr. Clemens Heusch (Head of European Litigation, Nokia)
Dr. Ralf Uhrich (Patent Litigation Counsel, Google)
Juliane Buchinski (Senior IP Counsel Europe, ZTE)
Dr. Monika Hupfauf (Partner, Koch/Hupfauf Attorneys)
Dr. Jörg Thomaier (Chief IP Counsel, Bayer)
Prof. Dr. Peter Meier-Beck (Judge, German Federal Supreme Court)
Annet van Hooft (van Hooft Legal)
Claudia Feller (Simmons & Simmons LLP)
Raffael Probst (Ludwig-Maximilians-University, Munich)