1. ADR v Litigation in IPR Disputes One Judge’s Perspective

2. Why do the English Courts encourage ADR? Save cost to public purse – Trial time – Brings whole dispute to an end No appeal Fewer satellite elements e.g. enforcement Can lead to better outcomes – more creative possibilities – win win

3. How do English Courts encourage ADR? The rules for all cases (including IP) require it – Pre-Action Protocol para 1.2 requires parties to consider using a form of ADR – CPR PD 29 para 4.10(9) provides: (9) in such cases as the court thinks appropriate, the court may give directions requiring the parties to consider ADR. Such directions may be, for example, in the following terms: – The parties shall by [date] consider whether the case is capable of resolution by ADR. If any party considers that the case is unsuitable for resolution by ADR, that party shall be prepared to justify that decision at the conclusion of the trial, should the judge consider that such means of resolution were appropriate, when he is considering the appropriate costs order to make. – The party considering the case unsuitable for ADR shall, not less than 28 days before the commencement of the trial, file with the court a witness statement without prejudice save as to costs, giving reasons upon which they rely for saying that the case was unsuitable.

4. Costs sanction In general in English Courts costs follow the event. But a failure to engage in ADR can lead to the winner being deprived of costs Halsey v Milton Keynes NHS Trust [2004] EWCA Civ 576 considered a failure to mediate

5. Halsey Clear court can take a failure to mediate into account in relation to costs. Party unwilling to mediate may well have to justify their position Factors include: – Merits of case. Maybe reasonable not to mediate if party has a strong case – Most cases are inherently suitable – Cost of mediation relative to what is at stake – Would mediation delay trial?

6. Success of ADR in IP cases An aggregate success rate reported by CEDR Mediators of 90% (CEDR Fifth Biennial Mediation Audit 15 May 2012 ). General, not IP specific. No statistics I am aware of for IP. Anecdotally: settlement rate for IP cases is lower than for general commercial cases May be because what is at stake is not purely money

7. Identifying cases suitable for ADR IP can be unsuitable when really about an all or nothing injunction. Mediation can suit money disputes Experience in Patents County Court / IPEC – Architects plans copyright case – Cost prohibitive Experience as practitioner – med-arb a major patent licensing dispute

8. What can the court do? Conduct Early Neutral Evaluation? – Some use in IPEC – Trade mark cases may be suitable for ENE. Propose settlements? – different legal traditions vary. Decide FRAND royalty instead of litigating the patents?

9. IP ADR in cross-border cases IP rights are territorial Some large territories – USA, UPC(?) Choice – litigate all over the world or conduct a single ADR – Reduce costs – End dispute once and for all – All eggs in one basket? May be a lower risk to fight all over, winning here, losing there – and then settle.

10. IP ADR in cross-border disputes II Some states will not readily enforce foreign judgments but… Often they will enforce contracts and arbitral awards 1958 New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards – has many signatories inc. USA, UK, Malaysia, India and China. Will enforce in commercial cases

11. Conclusion ADR has a clear role in IPR disputes Real potential advantages But like any tool, it has to be used properly

12. THANKS