Law Times

Law Times • January 31, 2011 An online resource 1.800.263.3269 Focus On IP/TRADEMARK LAW IP pros launch mediation body New organization aims to promote alternative dispute resolution BY JULIUS MELNITZER For Law Times agents have formed IP Neu- trals of Canada with a mission to promote the resolution of intellectual property disputes through mediation. "Th e profession is becoming A a lot more comfortable with me- diation as the cost of litigation goes up to the point where it is from a practical point of view only available to the wealthier companies," says Scott Jolliff e of Gowling Lafl eur Henderson LLP. "Our feeling was that the time was right for the IP bar to put together a group of qualifi ed neutrals to assist in the profes- sional mediation of disputes." According to IP Neutrals, people involved in the media- tion of IP disputes over the last fi ve to 10 years have indicated that mediation, whether volun- tary or mandated by the courts, has been successful in at least 60 to 70 per cent of cases. "If 'success' is defi ned as in- cluding better identifi cation of, simplifying or reducing the is- sues in a dispute, then it can be said that most mediations are successful," says the IP Neutrals web site. IP Neutrals is the brainchild of Charles Kent, a retired IP practitioner who practised with Ridout & Maybee LLP. Kent, along with several others in the group, sat on a committee set up by the International Trademark Association to promote media- tion and arbitration. Kent proposed the formation of a Canadian group and has become its president. A series of conference calls over 18 months ultimately led to the formation of IP Neutrals of Canada in September. Th e group's web site went live in November. "We are responding to cli- ents' increasing concerns over the escalating costs and com- plexities of IP litigation," Kent said in a press release announc- ing the group's formation. Currently, there are 13 neu- trals. Th ey are located in Mon- treal (Hugues Richard of Robic LLP); in Ottawa (Michael An- drews of Andrews Robichaud Professional Corp., Marion Bai- ley-Canham of Gowlings, Kent, and David Scott of Borden Lad- ner Gervais LLP); in Toronto (Daniel Bereskin of Bereskin & Parr LLP, Sheldon Burshtein of Blake Cassels & Graydon LLP, Untitled-2 1www.lawtimesnews.com 1/26/11 3:59:49 PM group of distinguished Canadian lawyers and patent and trademark Ronald Dimock of Dimock Stratton LLP, Brian Edmonds of McCarthy Tétrault LLP, Michael Erdle of Deeth Williams Wall LLP, and Jolliff e); and in Van- couver (Rob Fashler of Gowlings and Michael Manson of Smart & Biggar/Fetherstonhaugh). "Th e advantage this group brings to the table is the facil- ity which the neutrals have with technical IP issues, which in many cases is more than the judges who try IP cases," Burshtein says. IP Neutrals isn't a closed shop, however. "Th ere are published criteria and a committee that will rule on new entrants," Burshtein notes. In order to become a new ap- proved neutral, applicants must be in high regard in the Canadian IP community; have at least 15 years of IP experience as a lawyer or patent or trademark agent in Canada; have taken accredited mediation training courses to- talling at least 35 hours with the proviso that they can fulfi l up to seven hours of the requirement by shadowing one or more me- diations handled by an accred- ited mediator; and have acted as a mediator in at least two media- tions or as lead counsel in at least seven of them. "We're trying to get media- tors who have experience not only as mediators but also as IP trial counsel," Dimock says. Neutrals are approved for fi ve years and can be reappointed for successive terms if they're in good standing with IP Neutrals and continue to be held in high regard. During the preceding fi ve years, they must also have taken seven hours of accredited mediation courses and acted as a mediator in at least two me- diations or as lead counsel in at least seven of them. IP Neutrals provides educa- tion and information related to dispute resolution as well as mediation services. Th e web site lists the following factors that may make a matter suitable for mediation: • Litigation costs will likely be disproportionate to the award amount. • Parties are involved in mul- tiple actions and desire a single settlement. • Issues are highly technical, complex or fact-based and Members of the group may have more technical expertise than some judges, says Sheldon Burshtein. may be better decided by an expert in the fi eld. • Existing negotiations are deadlocked. • Parties want sensitive infor- mation and the outcome to remain confi dential. • Parties have a successful business relationship they wish to maintain. • Th e subject matter and scale of the dispute aren't worth the expense and inconve- nience of litigation. While mediators, as opposed to judges and other court offi - cials, come with a fee, they off er some advantages: • A court offi cial is available only after litigation has begun while mediators may be a preferable alternative before the expense, entrenched positions, and dis- closure that litigation brings. • Th e Trade-marks Opposition Board doesn't off er mediation for trademark oppositions or non-use proceedings. • A privately appointed me- diator will refl ect the parties' mutual choice of an indi- vidual with the qualifi cations, personality, and style most suitable to them. • A privately appointed me- diator, as opposed to a court- appointed offi cial, may have more IP, industry or technol- ogy expertise as well as more relevant mediation experience and training or background in considering a broader range of issues other than those directly related to the litigation. LT PAGE 9

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