Mediating IP disputes

Only a few days to go until this blogger attends the WIPO mediation course in Geneva.  As previously reported on this blog, the course organiser is Professor Mnookin, Director of the Harvard Negotiation Research Project, and the author of Beyond Winning: Negotiating to Create Value in Deals and Disputes.

As a diligent student, your correspondent has been doing his homework, which consists of reading most of the aforementioned book, and preparing two case studies.  The first case study consists of a complex biotech patent dispute arising out of a licensing transaction.  The dispute has been referred to WIPO mediation, and I am assigned the role of counsel for one of the parties.

Part of the dispute concerns whether some of the licensed patents are invalid for prior disclosure, including whether the disclosure was made in confidence, whether it was made within the one year US grace period, and whether the 6 month EPO grace period for “evident abuse” applies.

Knowing from the book that Prof Mnookin is keen on preparing decision trees, I have prepared my own decision tree, showing the likelihood of the patents being held invalid in the US, EPO and rest of the world (ROW), respectively.  I have had to make my own best guesses, based on the detailed facts given to us.  The purpose of the decision tree is not to be a legal opinion, but rather to help the parties get to grip with the issues.  My decision tree is shown below.  The tree demonstrates that the percentage probability of the patents being held invalid is 0% in the USA and 21% in Europe.  This is convenient, as I am counsel for the patent owner.

The second case study concerns a dispute between the author of a business book and a subcontractor hired to assist him write the book.  The facts of this case are much simpler than the biotech example, and the issues at stake include who owns copyright and payment of fees.  In this case study I have been allotted the role of mediator.

I am looking forward to seeing some friends and colleagues on the course, including Maxine Horn, founder of Creative Barcode, and a fellow member of the UK IPO’s Business to Business Licensing Committee.  The B2B group has created some booklets on IP licensing subjects for SMEs, which appear on the IPO website, including this one.

We will bring you a report on the course next week.

1 Comment

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One response to “Mediating IP disputes

  1. Thorsten Lauterbach

    Hello Mark,

    Thank you very much for this interesting post!

    With regard to case study 2, I would be keen on finding out more of the facts. While you state that the facts are much simpler, I suspect that the legal issues of joint authorship and joint ownership may still be rather challenging to mediate. Did the ‘assistant’ make a substantial contribution (‘pursuant to a common design’, as it were)? Should that contribution be ‘original’ in the copyright sense, or ‘merely’ substantial? And if the contribution merited the joint authorship tag, what ownership share should be allocated? Applying tenancy in common, should that be 50;50, irrespective of the size of contribution of the (now) joint author, or should there be an unequal share between the two? Judges and counsel across a wide spectrum of jurisdictions have grappled with these types of issues for a long time, without coming up with entirely convincing tests or solutions.

    I would like to be a fly on the wall at that seminar!

    With best wishes,

    Thorsten.

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