1. Asian Patent Attorneys Association 15th General Assembly 56th & 57th Council Meetings Hong Kong 2009 Workshop - First Session : “Mediation, Arbitration or MedArb : A Panacea or Another Pain in Resolving IP Disputes in Asia” Thursday, 19th November 2009 1400 hour to 1530 hour Moderator : C. K. Kwong Sit Fung Kwong & Shum www.sfks.com.hk

2. Background to the trend for ADR in IP Disputes International trade & commerce Different laws & legal systems Time, costs, abuse New York Convention 1958 which has 142 contracting states, requires contracting states to enforce valid arbitration agreements and arbitral awards ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

3. Arbitrability of IP Disputes (a concern when validity is involved) 1.State’s national laws -Validity of an intellectual property right granted by the State e.g. patent, registered trade mark (as opposed to copyright) 2.Importance at different stages -At the beginning when jurisdiction is challenged -When interim measures challenged -When enforcement challenged ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

4. Arbitrability of IP Disputes 3.New York Convention Article V : recognition and enforcement may be refused, inter alia, if -(1)arbitration agreement invalid under the applicable law agreed upon or, failing that under the law of country where the award was made - (2) subject matter is not capable of arbitration contrary to public policy ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

5. Arbitrability of IP Disputes 5.Different degrees of arbitrability of IP disputes in various countries. Examples :- (a)Switzerland, USA : very receptive (b)UK, Hong Kong, Singapore, Germany – receptive (c)Latin America, Israel - restrictive ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

6. Mediation Simply Described “a private 1, non-binding 2, third party mediator facilitated 3 process for parties to reach their own binding agreement 4 to settle a dispute” Mediator ‘s role: not a judge, arbitrator or legal adviser Aim : not to determine who is right or wrong ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

7. Arbitration Simply Described “a private process 1 in which parties agree 2, to have their dispute decided for them 3 by a 3rd party arbitrator 4 resulting in a binding decision imposed 5 upon them by the arbitrator, which can be enforced by law.” ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

8. MedArb or ArbMed Simply Described -The marriage between Mediation and Arbitration -Sometime the mediator may also be the arbitrator and vice versa -Sometime one process may be transformed into the other or transposed through an agreed mechanism or arrangement Section 2A, 2B and 2C of Arbitration Ordinance, Laws of Hong Kong Cap. 341 WIPO book pages 91-94 – standard clauses WIPO DRAFT Mediation & Expedited Arbitration Rules for Film & Media http://www.wipo.int ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

9. Comparison between Mediation vs. Litigation/Arbitration (a)The coin (b)P with complete intellectual integrity - look at the head side D with same integrity – look at the tail side Judge/Arbitrator look at the edge of coin. P & D to pursuade J/A J/A puts the coin down be it head or tail ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009

10. Comparison between Mediation vs. Litigation/Arbitration (a) (b)Parties P & D get onto a train – each bought a ticket for different destinations – Driver J is out of parties control place? Mediator (M) job : get the parties off this train (by opening their eyes to reality) to a place they can both agree ASIAN PATENT ATTORNEYS ASSOCIATION 15TH GENERAL ASSEMBLY 56 & 57 COUNCIL MEETINGS HONG KONG 2009