Details
- Written by an esteemed and experienced practitioner with extensive knowledge of litigation and transactions involving trademarks, copyright and unfair competition law, practicing at a top firm renowned for intellectual property law specialty
- This unique book combines valuable information as well as strategic advice in obtaining the best possible practices and outcomes in Alternative Dispute Resolution
- Highlights and explains the skill sets necessary to develop in order to optimize Alternative Dispute Resolution practices through helpful case study analysis
Alternative Dispute Resolution (ADR) has become a critical competency for intellectual property (IP) practice. Litigators and corporate counsel are compelled by the realities of federal court litigation to master the skills, strategies and tactics of ADR. The escalating cost of IP litigation leads clients to demand alternative solutions. Industry surveys disclose that the average cost to pursue an IP case through trial will exceed $5,000,000 (five million). Despite that high cost, the likelihood that counsel has relevant trial experience has dramatically declined as less that 1.5% of civil actions are resolved by trial. Thus it is no surprise that corporate clients favor some form of ADR as an alternative to federal litigation. As a result, successful litigators must master ADR or be left behind as clients turn to attorneys with the experience and knowledge to use ADR to achieve the clients' goals.
This book provides litigators, corporate counsel and in-house attorneys with the information and knowledge necessary to understand the options available for using ADR to resolve IP disputes, to create an effective strategy for using ADR, to achieve better results at a lower cost, and to control the ADR process as an effective advocate. The title serves as a handbook to explain the nature and use of ADR for IP disputes, including an assessment of the rising need for the use of ADR, the benefits available through the use of ADR, the tactics and tools available as an alternative to civil litigation, cases studies where ADR has been used to achieve improved results, and advice and tips for advocacy in ADR, with special emphasis on mediation skills. Relevant statutes and case law are included within a larger narrative built on stories and cases studies.
Part One of the book deals with strategic considerations involved in ADR. It explores why ADR is important today for the resolution of IP disputes. It then covers the key benefits of ADR and dispels the typical reasons given to avoid the use of ADR. Part Two of the book covers the nuts and bolts of ADR. It describes the various types of ADR available to counsel for IP disputes. This section also explains the various providers of ADR services, the means to lead a problem into ADR (contractual provisions, court mandate, corporate and industry policy) and the legal basis for the use and enforcement of ADR results. Part Three shows the application of ADR methods to various disputes through the use of case studies. This section shows how ADR allows for creative solutions that cannot be obtained in the all or nothing environment of a court decision. Part Four closes the book with tips and advice on advocacy in ADR, especially mediation which involves a distinctive skill set that is often misunderstood and poorly utilized by litigators.
A. Introduction
1. Definition of ADR
2. Why do it
3. What to do
4. How to persuade
5. A new mindset for litigators
6. Winning
B. ADR Is an Essential Competency for Litigators in the 21st Century
1. Cost of litigation leads clients to seek alternatives
2. Studies show clients favor use of ADR
3. Infrequency of trial places added importance on ADR skills
4. ADR offers possibility of better results: win-win solutions
5. New skills for litigators
C. Grounds for Avoidance
1. Loss of control
2. Unwanted disclosure
3. Weakness
4. Expense
5. Time
6. Uncertainty
7. Loss of fees
D. Benefits of ADR
1. Reduced cost
2. Greater control
3. Flexibility
4. Neutral expertise
5. Preservation of relationships
6. Confidentiality
7. Faster results
8. Emotional dynamics
E. Forms of ADR
1. Binding and non-binding procedures
2. Early neutral evaluation
3. Settlement conference
4. Mediation
5. Arbitration
6. Mini-trial
F. ADR Models
1. Mandatory arbitration
2. N.D. Cal. Early Neutral Evaluation
3. N.D. Ill. Trademark Mediation
4. ICANN UDRP
5. NAD
G. ADR Providers
1. AAA
2. WIPO
3. NAF
4. Others
H. ADR Triggers
1. Contractual provisions
2. Court order procedures
3. Party Choice
4. Industry agreements
5. The lawyer's role in getting to ADR
I. Legal Framework
1. Applicable case law
2. Statutory provisions
3. Enforcement of results
4. Appeals
5. Challenging unsound awards
J. Foundation for Success
1. Selecting good neutrals and arbitrators
a. Characteristics
b. Expertise
c. Methods
d. Experience: judicial vs. practice
2. Defining the process
a. Presence of decision makers
b. Scheduling adequate time
c. Instructing the neutral
3. Laying foundation in mediation for favorable arbitration or trial results
4. Avoiding "wacky" or "split the baby" results
5. How to get a dispute into ADR
6. Selecting disputes for ADR
K. Advocacy
1. Process
2. Position
3. Preparation
4. Presentation
J. Examples of ADR In Practice
1. Patent dispute involving acoustical devices
- potential for better results through ADR
2. Multiple advertising claim disputes
- ability to reduce cost and expedite resolution time
3. Copyright licensing dispute
- ability to preserve relationship for ongoing business
4. ADR as corporate policy
- the General Electric model
L. Conclusion
- Winning redefined
Appendix:
1. FAQs
2. References
3. Sample clauses
Sidebars:
Case studies, recommendations and advice based on interviews with Judges, ADR Neutrals, ADR Providers, Advocates and Clients
Mark V.B. Partridge is the founder of Partridge IP Law P.C. He has over twenty years of experience representing major companies in litigation and transactions involving trademarks, copyright and unfair competition law, with particular emphasis on brands and packaging, computer software, domain names and Internet advertising. He has served as a Director of the American Intellectual Property Law Association (AIPLA) and is an adjunct professor at the John Marshall Law School, teaching advanced courses in trademark law, litigation and transactions. In 2009 he was named one of the top IP strategists in the world by Intellectual Asset Management Magazine. He is an alumnus of the University of Nebraska and Harvard Law School.
"Mark Partridge teaches readers how to put into practice the wisdom and enlightenment of effective dispute resolution, and thus will help to substantially increase the chances of achieving better outcomes faster."
--Michael Leathes, Executive Director, International Mediation Institute
"It will give IP practitioners much-needed guidance in the world of ADR. It is well organized, with a clear table of contents and adequate index, and it contains useful examples and resources (most publicly available on the Internet and most victims of occasionally indifferent copyediting), as well as instructive anecdotal experiences that the author, a distinguished practitioner, employs to illustrate the text. Of particular value are the comparisons between mediation and arbitration, and the relative merits, as well as the pitfalls, of each."
-- Samuel Fifer, The Trademark Reporter
"This is a well-written, well researched book. It is easy to read, and possesses a clarity of purpose, often absent from legal texts. It is designed with the needs of the IP and general litigation practitioner in mind and it clearly meets its goals. Whether beginner or experienced advocate, this is one of those books that should be part of your legal practice collection on your library shelf."
--Colm Brannigan, Web Journal of Current Legal Issues
