Beyond IP (BeIP)

Mastercourse
(Legal Track)
Modes of Alternative Dispute Resolution: Mediation
and Arbitration
23 October 2019

Donemark Calimon
Partner
Quisumbing Torres
1. INTRODUCTION

The Conventional Dispute Resolution

Mechanisms

• Court Litigation
• Administrative Proceedings / Adjudications
Problems in Conventional DR Methods

Delays

Lack of expertise

Enforcement issues

Confidentiality

Cost
What is ADR?

Process of resolving disputes agreed to by the parties

Other than by adjudication of a judge or government officer

Neutral third party participates or assists in the process

Examples of ADR mechanisms are arbitration and mediation

2. MEDIATION

Voluntary DR Process

Mediator selected by parties

Facilitates communication and negotiation

Assists parties in reaching a voluntary agreement

regarding a dispute
(a) Voluntary
• The parties must agree to engage in mediation
• Parties may submit existing or future disputes
• Agreement must be in writing, as a general
rule
• Dispute must be commercial in nature, as a
general rule
Example of Mediation Clause in a Contract

“Any dispute or difference arising out of or in

connection with this contract shall first be referred
to mediation under the Mediation Rules of the
IPOPHL. If the mediation is terminated without
the dispute or difference being resolved, then
such dispute or difference shall be referred to and
determined by arbitration under the Arbitration
Rules of the IPOPHL in force at the time of
commencement of the arbitration.”
(b) Mediators selected by Parties
• Parties are free to determine qualifications of
mediators
• Mediators do not have to be
lawyers/judges/Court-accredited mediators
• Parties may agree on the mediator or the
procedure for the selection of mediators
• Parties may agree on an appointing authority
who will appoint the mediator in case of
disagreement
(c) Facilitate Communication
• Parties agree on the procedure and control the
proceedings
• Parties may choose arbitral institutions to
administer the arbitration (IPOPHL, HKIAC, PDRCI,
PICCR)
• Mediation allows private caucuses to enable
arbitrator to facilitate
communications/disclosures
• Mediation proceedings are confidential in nature
(d) Assist Parties in reaching an Agreement
• Mediators do not render awards but facilitates
settlement
• If mediation fails, litigation or arbitration may be
commenced
• Mediated settlement agreement may be enforced
by filing petition to enforce
2.1. IPOPHL Mediation Rules

- Rules of
Procedure for
IPO Mediation
Proceedings
(Office Order
No. 154 [2010])
(a) Coverage
• Administrative complaints for violation of Intellectual Property
Rights ("IPV") and/or Unfair Competition;
• Inter Partes cases ("IPC");
• Disputes involving technology transfer payments;
• Disputes relating to the terms of a license involving the author's
rights to public performance or other communication of his
work;
• Cases appealed to the Office of the Director General from
decisions of the Bureau of Legal Affairs ("BLA") and the
Documentation, Information and Technology Transfer Bureau
("DITIB"); and
• All other cases which may be referred to mediation during the
settlement period declared by the Director General.
(b) Mandatory mediation of cases

• All covered cases shall be referred to mediation

• The mediator shall be selected from the list of
IPO accredited mediators.
(c) Parties may opt to submit dispute
to the World Intellectual Property
Organization (Mediation)
(d) Successful mediation

• Head of the originating office approve unless

he finds the same to be contrary to law, public
policy, morals or good customs
• Effect of a decision or judgment on the case
and shall be enforced accordingly in accordance
with the pertinent rules of (PO and the Rules of
Court).
(e) Non-settlement of dispute

• If within sixty (60) days or ninety (90) days,

there is no settlement, head of originating
office shall set the case for pre-trial proper or
further proceedings
• Parties actively encouraged to submit their case
to Arbitration.
3. ARBITRATION

• Voluntary DR process

• Arbitrators appointed by the parties act as ADR

providers

• In accordance with agreement of the parties

• Resolve dispute by rendering an award

 (a) Voluntary
The parties must agree to submit a dispute to
arbitration (different from statute-based arbitration)

Parties may submit existing or future disputes

Agreement must be in writing

Dispute must be commercial in nature

 Example of Arbitration Clause in a Contract
“Any dispute, controversy or claim arising out of or relating
to this contract, or the breach, termination or invalidity
thereof, shall be settled by arbitration in accordance with
the Arbitration Rules of the IPOPHL.
The appointing authority shall be the IPOPHL;
The number of arbitrators shall be ... [one or three];
The place of arbitration shall be ... [town and country];
The language to be used in the arbitral proceedings shall
be ... .[__]”
(b) Arbitrators as Judges
Parties are free to determine qualifications of
arbitrators, as a general rule

Arbitrators do not have to be lawyers/judges

Minimum qualifications – Impartial and Independent

Parties agree on the arbitrator or the procedure for the

selection of arbitrators

Parties may agree on an appointing authority who will

appoint the arbitrators in case of disagreement
(c) Proceedings as agreed by parties
Parties agree on the procedure and control the
proceedings

Parties may choose arbitral institutions to

administer the arbitration (IPOPHL, ICC, HKIAC,
SIAC, PDRCI, PICCR)
Arbitration does not rely on technical rules of
evidence in ordinary court litigation or
administrative proceedings
Arbitration proceedings are confidential in
nature
(d) Award rendered by arbitrators
Parties agree on the procedure and control the
proceedings

Parties may choose arbitral institutions to

administer the arbitration (IPOPHL, ICC, HKIAC,
SIAC, PDRCI, PICCR)
Arbitration does not rely on technical rules of
evidence in ordinary court litigation or
administrative proceedings
Arbitration proceedings are confidential in
nature
3.1. IPO Arbitration Rules

• Rules of Procedure for

IPOPHL Arbitration
Proceedings (Office
Order No. 61, as
amended [2011])
(a) Nature of Arbitration is commercial arbitration

(b) Administering Body is combined IPOPHL and PDCRI Arbitration

Center

(c) Scope of Application:

- IP rights which may be submitted to IPOPHL for determination
with parties agreement
- IP disputes - registered, recognized without registration, or
registrable and all other actionable disputes involving breach of
IP rights
END / Q&A