asako wechs hatanaka, ll.m. (queen mary) max planck institute for intellectual property, competition...
TRANSCRIPT
Asako Wechs Hatanaka, LL.M. (Queen Mary)
Max Planck Institute for Intellectual Property, Competition and Tax Law
Centre d'Etudes Internationales de la Propriété Intellectuelle, Université de Strasbourg
Mediation as an Alternative to the IPRs Enforcement Reform in Europe
3rd WIPO Seminar on Intellectual Property and
Creative Small and Medium-Sized Enterprises
in the Digital Environment
28 May 2010
Asako
Wechs Hatanaka
2 28.05.10
Contents
1. What is mediation and the out-of-court settlement?
1.1. Definition
1.2. Advantages and disadvantages
2. Why does Europe need the out-of-court settlement
mechanisms?
2.1. Problems of the current enforcement mechanism
2.2. A successful example
3. How does the out-of-court settlement contribute to
improve IPRs enforcement?
3.1. European and national laws
3.2. Privatizing public authority's function
3.3. Gap-Filling techniques
3.4. Limits of using mediation in IPRs disputes
Asako
Wechs Hatanaka
3 28.05.10
1. What is mediation and the out-of-court settlement?
1.1. Definition
Arbitration
Mediation
Conciliation
Others:– Early Neutral Evaluation– Expert Determination
Asako
Wechs Hatanaka
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1. What is mediation and the out-of-court settlement?
1.2. Advantages and disadvantages
Advantages Party autonomy No jurisdiction/applicable law Cost efficiency Time efficiency Confidentiality Future oriented etc.
Disadvantages Agreement to undertake the process Voluntary process No binding effect Not all disputes are mediable etc.
Asako
Wechs Hatanaka
5 28.05.10
2. Why does Europe need the out-of-court settlement mechanisms?
2.1. Problems of the current litigation system (no.1)
A. Fragmented and heterogeneous patent litigation system
Duplication of enforcement actions Fragmentation of relevant procedures Risk of contradictory outcomes where similar
matters involved Forum shopping
cf. D. Harhoff
Economic Cost-Benefit Analysis of a Unified and Integrated
European Patent Litigation System, Final Report, 26 February 2009
Asako
Wechs Hatanaka
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2. Why does Europe need the out-of-court settlement mechanisms?
2.1. Problems of the current litigation system (no.2)
B. High cost
SMEs are suffering...
cf. WIPO Magazine 1/2010 (February) IP Litigation Costs
cf. Working Group’s Consultation on Proposals for Reform of the
Patents County Court, Intellectual Property Court Users’ Committee,
June 2009
cf. Review of civil litigation costs: final report, Lord Justice Jackson,
December 2009
Asako
Wechs Hatanaka
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2. Why does Europe need the out-of-court settlement mechanisms?
2.2. A successful example
Cooling off system in CTMR(Council Regulations (EC) no 207/2009 of 26 February 2009)
Art. 42(4)
The Office may, if it thinks fit, invite the parties to make a friendly settlement.
Asako
Wechs Hatanaka
8 28.05.10
3. How does the out-of-court settlement contribute to improve IPRs enforcement?
3.1. European and national laws (no.1)
European Laws
Lisbon Treaty (Art. 81(2)(g) TFEU)
Directive 2008/52/EC on certain aspects of mediation in civil and commercial matters
European Code of Conduct for Mediators
Asako
Wechs Hatanaka
9 28.05.10
3. How does the out-of-court settlement contribute to improve IPRs enforcement?
3.1. European and national laws (no. 2)
European Laws
Directive 2001/29/EC on the harmonization of certain aspects of copyright and related rights in the information society (Recital 46 and Art.6.4)
Recital 46
Recourse to mediation could help users and rightholders to settle disputes. The Commission, in cooperation with the Member States within the Contact Committee, should undertake a study to consider new legal ways of settling disputes concerning copyright and related rights.
Art. 6.4.
(...) in the absence of voluntary measures taken by rightholders, (...), Member States shall take appropriate measures to ensure that rightholders make available to the beneficiary of an exception or limitation (...).
Asako
Wechs Hatanaka
10 28.05.10
3. How does the out-of-court settlement contribute to improve IPRs enforcement?
3.2. European and national laws (no. 3)
National Laws (examples)
Procedure
UK : Pre-action protocol under the Civil Procedure Rule
IP Substance
France : Conciliation to solve disputes relevant to
remuneration of employee’s inventions (CPI L.611-7 and
L. 615-21)
Germany : Conciliation to establish common remuneration
standards for authors (s. 36.a UrhG)
Asako
Wechs Hatanaka
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3. How does the out-of-court settlement contribute to improve IPRs enforcement?
3.2. Privatizing public authority's function
UK Intellectual Property Office : mediation services
European and EU Patents Court (EEUPC):
'patent mediation and arbitration centre’
Asako
Wechs Hatanaka
12 28.05.10
3. How does the out-of-court settlement contribute to improve IPRs enforcement?
3.3. Gap-Filling techniques
L’Oreal/eBay case
Asako
Wechs Hatanaka
13 28.05.10
3. How does the out-of-court settlement contribute to improve IPRs enforcement?
3.4. Limits of using mediation in IPRs disputes (no. 1)
Fair and equitable measures, procedures and remedies (Directive 2004/48/EC on the enforcement of intellectual property rights Art. 3)?
Right to a fair trial (ECHR Art. 6.1)?
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Wechs Hatanaka
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3. How does the out-of-court settlement contribute to improve IPRs enforcement?
3.4. Limits of using mediation in IPRs disputes (no. 2)
How to secure the opportunities for ADR?
Mediation agreement remain inter partes to the extent that the subject matter is not mediable
How to cope with divergent sope of IPRs? etc.
