Bill Hulseys Patent Lawyer is the founder of HULSEY PC and practices in Austin, Texas and Memphis, Tennessee. Bill Hulsey Patent Lawyer established HULSEY PC to apply a highly developed specialty and experience in a broad span of technical fields. Bill Hulsey Patent Lawyer takes great pride in serving emerging growth companies competing in global markets with products and services relating to renewable and sustainable energy technologies, life sciences, electronics, environmental innovations, software, and aerospace technologies.

1. International Intellectual Property
Protection and Commercialization
International IP Rights Enforcement –
ADR & National Enforcement

4. International Intellectual Property
Protection and Commercialization
International IP Rights Enforcement –
ADR & National Enforcement

5. Introduction
 Both business and legal communities come to realize
that IP disputes are actually problems to be solved
rather than contests to be won or lost, and with such
perspective, alternate means to resolve conflict
become more appealing.
 At a time business has become global but courts still
remain national, there is an increasing need to foster
ADR to be less dependent upon variants of national
regimes

6. Difficulty Of IP Rights Enforcement
 In many countries, enforcement is difficult for IP
rights owners
 International system is yet to improve
 One way to obviate this difficulty is through
arbitration and mediation
 Courts are getting more and more involved in the
matter: some progress is in sight

7. Tendancy To Judiciarize
In IP Related Matters
 Lack of emotions, reliability, complex system, complex
problems
 Two-speed justice (akin medical field); concept of need
 Explosion of trade
 Arbitration and mediation to the business people’s rescue
(control over process, not over outcome)
 Efficiency (?) of court proceedings in intellectual
property disputes (costs, formalism, delays, complexity)

8. Arbitration And Mediation In
Intellectual Property
 Contractual and non-competition relationship (mere
ownership of IP rights is not enough)
 Finality- no appeal except excess of jurisdiction
 To avoid risk of ambiguity or difficulty of
enforcement:
 Foresee a complete dispute resolution clause indicating
forum, rules and time frame
 Clarify each parties’ intentions (law and equity)
 Fair and equitable solution in climate of cooperation

9. Mediation Characteristics
 Facilitator
 Intermediary intervention brings parties to an
agreement
 Voluntary participation: adjust differences
between parties’ interests to find compromise
 Less formal than arbitration; Fast, low cost and
confidential
 Private enforcement: or homologation through
court

10.  Decision is made by the parties, but does not
bind them, until finally agreed or solved
 Each party may withdraw at any time
(consensual participation)
 In case it fails:
 arbitration
 legal remedies
Mediation Characteristics

11. Arbitration Characteristics
 Dispute resolution or arbitration award rendered by one
or several adjudicators, upon which parties have
previously agreed to rely
 Adjudicator = intermediary, third party
 Equity + parties’ interests = solution
 Less formal than legal remedies
 Once is triggered, compelling mechanism (signature
clause)
 Parties bound by decision: private enforcement or court
homologation
 Appeal impossible (except excess of jurisdiction, blatant
legal error or denial of justice)
 The key is how / timeline to trigger it.

12. Arbitration Parameters
 Advantages:
 Confidential proceedings preserve private character of IP rights (trade
secrets, patents, reputation, etc.)
 Light procedural framework according to each party’s desires
 Active interaction by adjudicator
 Supple evidence rules
 Experienced adjudicators (IP rights involving a certain degree of
technical knowledge in the field)
 Faster and more cost-effective than traditional legal remedies
 Helps maintain good business relationships with regards to IP rights,
beyond the disputes
 Easier enforcement

13. Arbitration Parameters
Limits
 Mediation and arbitration of IP rights are more
difficult when the disputes are about:
 Validity (in rem)
 Infringement (subject matter)
 Concept of public interest and state policy (matters
that should be tried by the Courts, not in private
dispute resolution)

14. Arbitration Parameters
To Foresee in Contractual Arrangement
 In order to ensure efficiency, as soon as the
business relationship starts, we suggest to
foresee in the contract:
 Procedure to resolve eventual disputes
 Number of adjudicators or mediators (one or three
appointment by parties or choosing from existing
publicly recognized roster)
 Roles and powers of the adjudicator
 Delays: triggering – process – length

15. Venues
 Recognized organizations (WIPO, NAF, ICC,
AAA)
 Should the forum not be determined, at least
provide for application arbitration procedural
rules
 Selection of arbitrators and time frame to
appoint them:
 Time frame to begin arbitration proceedings
 “Time is of the essence” clause
 Timeline to render decision
Arbitration Parameters

16. Situations To Avoid
 Situations:
 Copyright matter
 Software co-development contract
 Broken contractual relationship
 Bad language of arbitration clause: avoid the
simple statement in contract that disputes will
be settled by arbitration!!

17. Example Arbitration Clause
 Practical Case: (AAA, CCI, WIPO, CCAC): Any dispute
under this Agreement shall be submitted to binding arbitration
in the City of […] under the rules and terms of reference
then prevailing in said venue (or under the rules of a privately
recognized body). The parties agree that time is of the essence
: the arbitration process will start within x days from notice
sent by one party and once appointed, the arbitrator(s) shall
render a decision within […] delay. Decision will be final and
with no appeal except if breach of natural justice or excess
of jurisdiction by arbitrator. Upon decision rendered and any
award granted, it may be entered and enforced in any court of
competent jurisdiction.

18. Enforcement Of Foreign Awards
 One of the greatest unknown advantages (well kept secret)
 United Nations Foreign Arbitral Awards Convention (1958 “New
York Convention”)
 In Canada since 1985 (not before because of constitutional
difficulties) thus allowing foreign arbitration decision to be
enforced – i.e. once homologated, then becomes court judgment
 More than 125 jurisdictions are parties
 The application of the Convention in Canadian Law does not rely
on its adoption by the country from where the award has been
rendered
 Canadian Court to homologate only, not to review merit unless
abuse of jurisdiction or blatant denial of justice

19. Enforcement Of Foreign Awards
 Mere fact that award comes from trade
legal relationship is enough for the
Convention to apply
 Once arbitral award is homologated, it
becomes a national judgment ready to be
enforced
 Awards enforced irrespective of their
substantive content

20. Conclusion
 Intellectual Property is present at many levels,
especially with the development of technologies and
represents one of the essential competition assets
 In the era of multilateral trade, WTO and increased
globalization, IP rights travel fast and easily because
of technology development, which contributes to
business globalization
 IP rights owners face bigger and bigger markets, thus
fiercer competition

21. Conclusion
 Products evolve very quickly and therefore are soon
overcast by new technologies
 Glut of judicial courts forces IP rights owners to rely on
alternative means in order to resolve their disputes
 Solution: find an efficient way against disputes while
preserving relationships between IP rights owners and
confidentiality of these rights
 Non-judicial resolution dispute modes such as arbitration
and mediation answer these concerns and fit within the IP
field

22. International Intellectual Property
Protection and Commercialization
International IP Rights Enforcement –
ADR & National Enforcement

23. www.HULSEYIPLaw.com