1. Asako Wechs Hatanaka, LL.M. (Queen Mary) Max Planck Institute for Intellectual Property, Competition and Tax Law Centre d'Etudes Internationales de la Propriété Intellectuelle, Université de Strasbourg Mediation as an Alternative to the IPRs Enforcement Reform in Europe 3rd WIPO Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment 28 May 2010

2. Asako Wechs Hatanaka 228.05.10 Contents 1. What is mediation and the out-of-court settlement? 1.1.Definition 1.2.Advantages and disadvantages 2. Why does Europe need the out-of-court settlement mechanisms? 2.1. Problems of the current enforcement mechanism 2.2. A successful example 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.1. European and national laws 3.2. Privatizing public authority's function 3.3. Gap-Filling techniques 3.4. Limits of using mediation in IPRs disputes

3. Asako Wechs Hatanaka 328.05.10 1. What is mediation and the out-of-court settlement? 1.1. Definition Arbitration Mediation Conciliation Others: – Early Neutral Evaluation – Expert Determination

4. Asako Wechs Hatanaka 428.05.10 1. What is mediation and the out-of-court settlement? 1.2. Advantages and disadvantages Advantages Party autonomy No jurisdiction/applicable law Cost efficiency Time efficiency Confidentiality Future oriented etc. Disadvantages Agreement to undertake the process Voluntary process No binding effect Not all disputes are mediable etc.

5. Asako Wechs Hatanaka 528.05.10 2. Why does Europe need the out-of-court settlement mechanisms? 2.1. Problems of the current litigation system (no.1) A. Fragmented and heterogeneous patent litigation system Duplication of enforcement actions Fragmentation of relevant procedures Risk of contradictory outcomes where similar matters involved Forum shopping cf. D. Harhoff Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System, Final Report, 26 February 2009

6. Asako Wechs Hatanaka 628.05.10 2. Why does Europe need the out-of-court settlement mechanisms? 2.1. Problems of the current litigation system (no.2) B. High cost SMEs are suffering... cf. WIPO Magazine 1/2010 (February) IP Litigation Costs cf. Working Group’s Consultation on Proposals for Reform of the Patents County Court, Intellectual Property Court Users’ Committee, June 2009 cf. Review of civil litigation costs: final report, Lord Justice Jackson, December 2009

7. Asako Wechs Hatanaka 728.05.10 2. Why does Europe need the out-of-court settlement mechanisms? 2.2. A successful example Cooling off system in CTMR(Council Regulations (EC) no 207/2009 of 26 February 2009) Art. 42(4) The Office may, if it thinks fit, invite the parties to make a friendly settlement.

8. Asako Wechs Hatanaka 828.05.10 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.1. European and national laws (no.1) European Laws Lisbon Treaty (Art. 81(2)(g) TFEU) Directive 2008/52/EC on certain aspects of mediation in civil and commercial matters European Code of Conduct for Mediators

9. Asako Wechs Hatanaka 928.05.10 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.1. European and national laws (no. 2) European Laws Directive 2001/29/EC on the harmonization of certain aspects of copyright and related rights in the information society (Recital 46 and Art.6.4) Recital 46 Recourse to mediation could help users and rightholders to settle disputes. The Commission, in cooperation with the Member States within the Contact Committee, should undertake a study to consider new legal ways of settling disputes concerning copyright and related rights. Art. 6.4. (...) in the absence of voluntary measures taken by rightholders, (...), Member States shall take appropriate measures to ensure that rightholders make available to the beneficiary of an exception or limitation (...).

10. Asako Wechs Hatanaka 1028.05.10 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.2. European and national laws (no. 3) National Laws (examples) Procedure UK : Pre-action protocol under the Civil Procedure Rule IP Substance France : Conciliation to solve disputes relevant to remuneration of employee’s inventions (CPI L.611-7 and L. 615-21) Germany : Conciliation to establish common remuneration standards for authors (s. 36.a UrhG)

11. Asako Wechs Hatanaka 1128.05.10 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.2. Privatizing public authority's function UK Intellectual Property Office : mediation services European and EU Patents Court (EEUPC): 'patent mediation and arbitration centre’

12. Asako Wechs Hatanaka 1228.05.10 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.3. Gap-Filling techniques L’Oreal/eBay case

13. Asako Wechs Hatanaka 1328.05.10 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.4. Limits of using mediation in IPRs disputes (no. 1) Fair and equitable measures, procedures and remedies (Directive 2004/48/EC on the enforcement of intellectual property rights Art. 3)? Right to a fair trial (ECHR Art. 6.1)?

14. Asako Wechs Hatanaka 1428.05.10 3. How does the out-of-court settlement contribute to improve IPRs enforcement? 3.4. Limits of using mediation in IPRs disputes (no. 2) How to secure the opportunities for ADR? Mediation agreement remain inter partes to the extent that the subject matter is not mediable How to cope with divergent sope of IPRs? etc.

15. Asako Wechs Hatanaka 1528.05.10 Thank You! Asako Wechs Hatanaka asako.wechs-hatanaka@ip.mpg.de