Facing an IP dispute? There are resolution options that don’t require going to court and the associated fees. Gary Lacasse, Executive Director of the Alternative Dispute Resolution Institute of Canada and Justine Ferland, legal officer, WIPO Arbitration and Mediation Centre, explore how alternative dispute resolution can help resolve conflicts and protect intellectual property. From mediation to arbitration, they discuss when these approaches make sense and how they help preserve time and business relationships.
Facing an IP dispute? There are resolution options that don’t require going to court and the associated fees. Gary Lacasse, Executive Director of the Alternative Dispute Resolution Institute of Canada (ADRIC) and Justine Ferland, legal officer, WIPO Arbitration and Mediation Centre, explore how alternative dispute resolution can help resolve conflicts and protect intellectual property. From mediation to arbitration, they discuss when these approaches make sense and how they help preserve time and business relationships.
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Episode title: Managing IP disputes: mediation, arbitration and other solutions
Description: Facing an IP dispute? There are resolution options that don’t require going to court and the associated fees. Gary Lacasse, Executive Director of the Alternative Dispute Resolution Institute of Canada and Justine Ferland, legal officer, WIPO Arbitration and Mediation Centre, explore how alternative dispute resolution can help resolve conflicts and protect intellectual property. From mediation to arbitration, they discuss when these approaches make sense and how they help preserve time and business relationships.
Lisa Desjardins (Lisa): You’re listening to Canadian IP Voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs and trade secrets work in real life. I’m Lisa Desjardins, and I’m your host.
The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.
Disputes. We don’t want them, but they do happen. Maybe your co-founder has left to set up a new company, or a former employee uses your IP. Or maybe it’s a licensee you can’t seem to come to an agreement with, and you are trying to avoid going to court. But what can you do? Or is it, what could you have done?
In this episode, we’ll talk about resolving disputes and, more specifically, alternative dispute resolution or ADR. This is critical knowledge for IP owners, as it can be an effective avenue to safeguard your innovations and creations without breaking the bank. As the world of IP often spans borders and involves different jurisdictions, we’re happy to have with us today 2 key institutions in this domain. We have Gary Lacasse, who is the executive director of the ADR Institute of Canada, also called ADRIC, Canada’s leading authority setting standards for ADR practices within the Canadian context. We also have Justine Ferland, who is an associate legal officer in the IP Disputes Section at the WIPO Arbitration and Mediation Center in Geneva, Switzerland. Welcome to the podcast.
Gary, I’ll start with you. Could you explain ADR to creators and inventors and why they need to know about this?
Gary Lacasse (Gary): Well, they need to know about it because ADR is the cornerstone of respectful conflict resolution. It provides cost-effective and cost-efficient solutions to business clients, family clients and all sorts of practices that are out there—HR or other case, situations, the disputes that are out there, allow for resolution without the costly litigation, saving both time and energy. With our very burdened legal system at the moment, it’s a really cost-effective and highly efficient way of resolving dispute resolutions. And it’s expert advocacy because we do talk about mediation, arbitration, adjudication and other fields that are out there. ADR is taking up more and more space in the legal landscape in Canada and around the world, and we’re looking at International Mediation Institute out of Europe and our associations with them. It’s also a community engagement that our practitioners bring when they talk about research, course development and teaching people. But it’s really a network for creators and inventors to connect with them to understand the roadmap to conflict resolution as they develop and start their companies.
Lisa: So can we talk a little bit more about ADRIC then? What’s the role and mandate of the organization?
Gary: Well, our role and mandate is that we are here to ensure that, that’s why we’re called the Institute, to ensure that the norms are there and the levels of the knowledge are there for our designations. So when you do come to ADRIC, you’re insured through our roster that the mediators or arbitrators that you’re going to be choosing have a level of education and maintain their education throughout the years. Our arbitration rules are being rewritten this year, so come to our conference in October and you’ll see our new rules. It really demonstrates that we are at the cutting edge of ADR in the landscape, even with our Indigenous initiatives that we’re doing to look at the equivalency of practice with Indigenous leaders to recognize them in our designations. So there’s a lot in movement at the moment and there’s a lot of space for people to resolve conflict in a comprehensive, respectful and agreeable way.
Lisa: You’re mentioning the professionals and the kind of training that they have. Let’s talk a little bit more about them. What’s the typical profile that you see having as a professional ADR professional and what kind of field are they working in?
Gary: OK. If we look at our overall landscape, we’ve done a couple of research catalysts at the moment and we’re doing a major research with Hamburg to look at the landscape in Canada, and it’s a huge initiative that’s starting next year. So we know that 30% are mediators of our practitioners, 30% are arbitrators and 30% are other dispute resolution that includes full encompassing investigations, family, HR—all those are in there and we ensure that through our courses, those that seek designations do have the level of practice that people are looking for. So we do have a complete system of searching for that and also we do case administration for arbitration. So the profile of our arbitrators are mostly from the legal system. So it’s people who are doing the practice of law at the same time. But there are lay people that do go into arbitration. Mediation are also lawyers, some lawyers, but mostly people who have an interest in conflict resolution. A lot of family law. But there’s a lot of commercial, there is HR law, that’s investigations. And we have also preventative ADR services also that’s taking more and more space in our in our landscape because people are looking to see how do we avoid conflict and how do we get there and that’s something that we’re studying at the moment to get to. And you know, like when we look at the CAB centres across Canada, the Islami centres, they’re very well versed in what they do also. And we’re looking at an equivalency for their course also to get our designations for mediation. So there’s a lot there, but there’s the background is a lot of lawyers and arbitration and adjudication because we do construction adjudication also. So, but it’s also some people who have some interest in conflict resolution, psychologists, HR professionals, and so on and so forth. So there’s a really good mix of people out there, and you’ll find exactly what you need through asking us who would be, or going to our website and seeing on our ADR Connect who is the best person for you.
Lisa: So let’s talk a little bit more about the companies that come to you when there’s a professional conflict. When an SME contacts ADRIC, what are they looking for?
Gary: Sometimes they come to us when conflict arises, so they haven’t done the preliminary work on how to ensure that when ADR, when the conflict arises, they have the clauses in their contracts to ensure that there’s a path forward to resolve the conflict. That’s I think is where we need to adjust our lens a bit and say, well, ADR should be thought of at the beginning of your invention maybe, and also in all of your contracts, be it with your HR contracts, be it with your development contracts or when you lay down your company. So that you do have clauses that are more in an engaging and respectful manner of arriving to a resolution, so that you do know the roadmap. And it also does demonstrate cutting-edge willingness to be able to face conflict and resolve it down the road. It’s more in that way of a wrap-around objective to conflict and potential conflict and to say we may have conflict where and we are going to be able to roadmap how we’re going to resolve it in a comprehensive, respectful and probably profitable way because going to the court systems with limited resources, you will not have positive results at the end and that’s what ADR brings to the table, is a cost-efficient, relatively quick way of resolving conflict. Because we have to admit that our judicial system in Canada is broken and we need to find different routes to resolve conflict.
Lisa: We’re going to talk more about IP in a minute, but before I let you go, Gary, let’s say that I am an entrepreneur and I’ve realized from this conversation that maybe I should need to contact ADRIC. I think I might have a potential conflict or I’m just proactively trying to learn something more. Where do I start?
Gary: I would start by looking on our resources and seeing what the rules are around mediation, arbitration and others. What the philosophy of ADR is, and also look at maybe practitioners in your region and connect with them to see what do I need to do to ensure that I have a good foundation to resolve conflict in the future. I think that’s the first step that everybody should take. When you do your marriage contract, you do have time to go through it and see exactly what your exit clauses or potential conflict clauses will be. And I think that could translate very easily, and it does translate very easily in the business environment.
Lisa: Excellent. Thank you. Now let’s talk about WIPO’s Arbitration and Mediation Center. Justine, you’re dealing with both contractual and non-contractual disputes on almost anything IP ranging from patent infringements and IP licenses as well as non-IP commercial cases like distribution or franchising, marketing, construction, energy and insurance disputes. Wow, that’s a lot. First, tell me a little bit about yourself and the kind of IP-related disputes that the WIPO ADR Center is dealing with.
Justine Ferland (Justine): Thanks, Lisa. Yeah, so I’m a Canadian lawyer from Montreal, but I’ve been working now for a few years at the WIPO Arbitration and Mediation Center, which is in Geneva, and the center is part of the World Intellectual Property Organization, or WIPO, which is a specialized United Nations agency to which, obviously, Canada is a member state. And when most people think about WIPO, I think they think about the services that are offered to register patents or trademarks internationally. The international conventions on IP rights, but that’s not all we do at WIPO. And through the Arbitration and Mediation Center, WIPO also offers ADR services to facilitate the resolution of commercial disputes between either private or public parties that will involve all types of IP and technology issues, and our services will include mediation, arbitration, expedited arbitration, expert determination and domain name dispute resolution. And to date, the WIPO Center has been involved in the resolution of almost 3,000 disputes, and most of them have been administered in the past 5 years. So there’s really been a surge in interest towards ADR recently and especially, I would say, towards mediation. Now in terms of what kind of IP disputes that we deal with, we see a bit of everything, really, whether it’s patent, trademark, copyright disputes, also ICT disputes. And just to give you a few examples of cases that we saw recently, in 2023, there were some cases that pertained to R&D and technology transfer agreements, IP licensing agreements, IP infringement disputes, life sciences agreements, including some disputes that related to vaccines and other pharma products, copyright infringement in the digital world, for example, on social media platforms, copyright collective management, IP valuation, and also it’s a bit more technical, but the determination of what we call Fair, Reasonable and Non-Discriminatory or FRAND licensing terms for the standard essential patents. So I think that shows that ADR is appropriate for almost any type of IP dispute as long as both parties agree to participate in these procedures in good faith.
Lisa: That’s an amazing breadth of different scenarios when you need to use or can consider ADR. Who is your typical client?
Justine: Well, by client I assume you mean the parties who are using WIPO’s ADR services. So about 50% of parties involved in WIPO ADR cases are SMEs and startups, but we also see large-sized companies, artists, inventors, R&D centres, universities, producers, collecting societies, amongst others, and these parties are located all over the world. Although I would say mostly in Europe, North America and Asia. In 2023, for example, we administered disputes involving parties from 64 different countries. About 75% of the cases that we administer are international, so involving parties from different countries, and about 25% are national. And if we look at the most frequent business sectors, then the ones we have seen most often recently are the creative and entertainment industries, ICT, so information and telecommunications technology, life sciences, mechanical equipment and luxury goods. And in terms of new sectors, the up-and-coming ones we see more and more parties interested in ADR that are active in the areas of green technology, video games, esports, artificial intelligence. So all of these new sectors are also gathering a lot of interest.
Lisa: Super interesting. Also big users of the IP system, so thanks for sharing the statistics. Very interesting. How much does it cost?
Justine: Well, I will give you a very “lawyer-y” answer. It depends and it depends because the nature, the complexity and the value of the disputes that we administer also vary greatly from one to the other, and disputes where damages are detailed, which is not always the case, these damages can range from just a few $1,000 to more than a billion dollars. Some disputes are also quite simple, while others can be extremely technical, especially when it comes to patents. So as you can imagine, the time to be spent on the case by the mediator or the arbitrator and the degree of expertise that may be required from them is different from one case to another. What is certain though, is that the WIPO Center aims to offer competitive fees that are tailored to each case. So under the WIPO ADR rules, it’s the WIPO Center who sets the mediator’s or arbitrator’s fees in a case. But we also always do so in consultation with the parties and with the arbitrator or the mediator, with the goal of setting fees that are fair and reasonable, both for the parties but also for the mediator or arbitrator involved. And we know, for example, that SMEs or individuals don’t have the same financial means than big corporations, and we factor this in when we set fees. And maybe just to give you an example, in mediation cases, our schedule of fees and costs provides that when the amount in dispute is up to $250,000 U.S. dollars, the mediator’s fees will be fixed at $2,500 for roughly 10 hours of work, and this cost—the cost is usually split equally between the parties. So if you have 2 parties, that’s $1,250 each. If the amount in dispute is higher than $250,000, then the mediator works with an hourly rate, and we usually try to set that rate within the indicative bracket of $300 to $600 per hour. So once again, this is divided equally between the parties, but depending on the number of hours that is required, you can have an idea of the total cost of the case.
Lisa: What are the advantages of using WIPO ADR?
Justine: Well, there are many advantages. Gary just said that ADR in general is more affordable. It’s quicker, it can be used in an easier way. And I fully agree with that. So maybe just to put some of these advantages in an IP specific context. I would say that one of the big advantages of ADR for anyone who operates internationally is that you can actually consolidate all your national IP disputes into just one single ADR procedure. So let’s take, for example, an SME who has patented an invention in many countries at once because it markets or it intends to market the product in more than one country. That’s of course very frequent. Well, if that SME finds out that someone else is infringing on the patent in all of these different markets, the SME will have to file a separate legal claim in all of the countries where there is an infringement. This is of course very time consuming. This is costly and you also risk getting different decisions and different jurisdictions because each court will apply their own national laws and you can actually avoid that with ADR because you can just consolidate all these national disputes into one procedure and just find one cross-border solution to all of them. Then of course, it’s also time efficient. Litigation often entails multiple procedural steps. You can also appeal the decision, so it’s not rare that you see years passed by before you get a final decision, and by that time you know, for example, if your litigation concern is that technology. Well, the technology may already be outdated, so by using ADR you can act very quickly. The whole procedure can be completed in a few months, sometimes even in a few weeks if the parties are in a rush. So that’s a big plus. There’s also the procedural flexibility of ADR that’s an advantage, the parties can shape the process to best suit their needs, and everything remains quite informal compared to court litigation. For example, nowadays we see that most of WIPO cases are conducted online. The parties will choose to meet through video conferencing facilities and of course that helps a lot to contain the time and the cost, especially in international disputes. And also as Gary mentioned, you can use mediation not to solve a dispute, but just to help you prevent the dispute or to help you negotiate a contract. You can call a mediator to assist you. And this is what we call deal mediation. And it’s also something that I think is very useful. And then apart from that, there’s a confidentiality aspect. ADR is confidential. Court proceedings are generally public. Sometimes you just don’t want your know-how or your trade secrets exposed in a court judgment. So ADR may be especially appropriate. And I think another advantage that is mostly related to mediation but mediation really allows parties to find win-win solutions and to preserve business relationships. Many times parties have a long-standing collaboration, for example, they’re trying to develop new mitigations through R&D agreements. It’s generally not in their interest to litigate. They wanna progress, they want to reach—you know to create the product and so mediation helps them find a solution to the dispute and preserve the business relationship instead of creating some further conflicts because in court litigation, you have a winner and a loser. So I think that’s. That’s it. I could. I could go on, but. It’s uh, it’s in a nutshell.
Lisa: I’m sure many of our listeners are potentially relieved. They see there is hope. There’s light at the end of the tunnel and I’m sure they’re very curious to learn more. What resources does WIPO offer the general public to learn more about ADR?
Justine: Ah, we make a lot of resources available online. A big part of our work is awareness raising, so if you go on our website wipo.int/amc, you’ll find the information on the different procedures that we offer, online filing forms, you know FAQs, very easy-to-read information for those who would like to know more. We also provide the model ADR clauses and submission agreements. We also provide links to publications, some more general on IP mediation or IP arbitration, some that are more focused on a specific sector. You’ll also find webinars in many languages, including English and French. We collaborate with different entities to publish, for example, blog posts or articles, including some with Canadian entities like the Intellectual Property Institute of Canada, who has a blog and we published on that blog a couple of years ago. And we’re also always happy to have a one-on-one exchange, either over the phone or by email. If anyone has questions about ADR, if they’re involved in a dispute and they’re considering it but don’t really know where to start, we’re happy to just discuss and maybe suggest which procedure may be best suited to a dispute. Or maybe propose some adaptations to the model clauses if they want to put an ADR clause in a contract. So feel free to contact us, all this assistance, it’s free of charge and it’s always a pleasure for us to exchange with the stakeholders.
Lisa: Absolutely wonderful. And for the listeners, open a description to this podcast and you’ll find various links to both ADRIC and WIPO’s ADR. Gary and Justine, it’s been my absolute pleasure to have you here today and to share your expertise. Thank you so much.
Gary: Thank you.
Justine: Thank you, Lisa.
Lisa: You’ve listened to Canadian IP Voices where we talk intellectual property. In this episode we were joined by Gary Lacasse who is the Executive Director of the ADR Institute of Canada and also Justine Ferland, who is an associate legal officer in the IP Disputes Section at the WIPO Arbitration and Mediation Center in Geneva, Switzerland. Gary and Justine explained the many ways alternative dispute resolution can help entrepreneurs resolve or prevent conflicts while preserving business relationships, confidential information and quite possibly also time and money that could otherwise be lost if the conflict ends up in court. To learn more about ADR, open the description to this episode where you’ll find a range of links to relevant resources.