Enforcing your intellectual property rights There are various

Enforcing your intellectual property rights

There are various ways to enforce your intellectual property

The legal process offers various options. . . Litigation Arbitration Expert Determination Mediation Negotiation Acceptance Self help

Why is IP so special? international complex specialist facts complex specialist laws its value and relevance changes over time its value may be immeasurable impact of uncertainty on investment sophisticated parties

Issues in selecting mechanism inter party or against the world cost enforceability transparency/predictability impartiality speed availability of evidence state of relationship language/culture

Importance of each factor varies with. . parties trust timing - cash flow - alternative technologies - competitor activities - other markets - age of patent - business alternatives

Self help • Minimum expense • Aimed at avoiding problems • Situation specific involves • Good housekeeping • Thinking ahead • Splitting out the different aspects

Record-keeping • • knowhow must be specified and secured Record disclosures both ways Maintain detailed lab books per project Contracts should be referenced by project and individual pieces of IP

Publicity and Correct Use • • • Be specific in contracts Label items Careful use of trademarks Ensure correct registrations Trained staff

Contracts • • Timely With appropriate party Staff Confidentiality Clear parameters of use Audit Review and update Dispute resolution clauses

Third-party assistance • • • Patent office opinion Customs and excise Lawyer’s letters Offices of fair trading/trading standards Consumer protection Press

Litigation Statutory process before state appointed judges

Litigation Pros clear process predictable? enforceable? Good v third parties legal advice available appeals possible Declarations and injunctions Cons slow? very expensive country specific adversarial lack of judicial expertise public winner takes all + ltd remedies imbalance of resources evidentiary rules non EU enforceability

Use For. . . debt? need for a public declaration both parties in the EU emergency injunctions clarifying law enforcement concerns

Arbitration State supported private process before privately selected judges

Arbitration Pros private flexible? internationally enforceable all counties – one process limit issues Cons slow? expensive limited choice of lawyers no appeal uncertainties cultural misjudgements precedents? limited evidence opaque Inter party

Alternative Arbitration Procedures Early Neutral Evaluation Short Form Accelerated Procedures Interim Awards WIPO schemes

Use for. . . international cases complex technical cases where confidentiality a concern where large sums of money involved

Expert Determination Parties mutually select individual experienced in field to decide the issue

Expert Determination Pros fast cheap limited evidence case understood Cons no appeal decision on narrow points not suited to multifaceted cases contractual enforceability inter party

Use for. . . technical disagreements eg. Specification compliance marketing norms Legal points eg. Whether licensor obliged to pursue infringer

Mediation Use of a neutral to facilitate a negotiation

Mediation Pros totally confidential fairly inexpensive quick 80% success rate? other options remain open can reduce party imbalance parties keep control all issues at one sitting unlimited solutions mediator may be business aware very flexible Cons Contractually enforceable Requires cooperation/no coercion Choosing mediator(s) Willingness to compromise inter party only Process unfamiliar

Use For. . . don’t need immediate injunction parties “willing” and legally competent inter party(ies) disputes complex cases many areas of dispute ongoing relationship

Negotiation Parties seek to resolve the matter between themselves

Negotiation Pros Cheap Parties in control parties best experts all issues in one sitting? Other options remain open Stepped approach possible Cons may be slow “Band Aid” solutions? requires cooperation willingness to compromise personalities get in the way? inter party only contractually enforceable confidential?

Use for. . . willing parties two party disputes limited number of issues in dispute

Acceptance That the other party may be right

Acceptance the other party is rarely insane there is usually some basis for their position you might be wrong!

Conclusion Manage your affairs to avoid disputes Choice of method requires genuine thought - at contract stage - when dispute arises Different methods in different clauses Escalation clauses worth considering Remember options within options Keep control of your dispute and your mind on the big picture

Patricia Barclay www. bonaccord. eu 0131 202 6527