March 31, 2016

March 2016 - Intellectual Property Issue

We hope you enjoy this issue of Just Resolutions eNews presented by the Intellectual Property Law Committee. Our committee is focused on the use of dispute resolution processes in matters involving intellectual property issues including not only federal rights related to patents, federally registered trademarks, limited federal unfair competition, dilution of famous marks, and copyrights but also state law rights related to either unregistered “common law” trademarks or state law registered trademarks, trade secrets and know-how, and technology agreements, including licensing and development agreements.

Jack GoldsteinThe Intellectual Property Committee provides educational programs for Committee members on cutting edge topics such as Emergency Arbitration of IP Matters Under the ICDR Rules, Resolving Disputes Involving Standard Essential Patents and Serving as a Special Master in Patent Cases. The Committee is also looking to partner with alternative dispute resolution practitioners in other specialties to explore common issues so that we can all offer our clients the tools for the most efficient resolution of their disputes no matter how simple or complex. We hope that all dispute resolution practitioners will find value in the articles in this newsletter.

Merriann Panarella
Jack Goldstein
Co-Chairs Intellectual Property Law Committee

The Winter 2016 issue of Dispute Resolution Magazine is here! View the digital PDF version or visit the Winter 2016 website for individual articles.

The 18th Annual Spring Conference
April 7 - 9, 2016
Only a few short weeks left!



Sheraton New York Times Square

CLE | Professional Development | Training

Don't miss this opportunity to connect with other ADR professionals and take part in CLE programs on every imaginable topic in the field.

See the tentative schedule at a glance, hotel and travel, and registration information at

Volunteers Needed for the Representation in Mediation Competition

The 2016 Representation in Mediation Competition National Round is being held in conjunction with the ABA Section of Dispute Resolution Spring Conference next month in New York. The competition measures how well law students model appropriate preparation for and representation of a client in mediation. This is the 17th year for the competition.

The ABA Section of Dispute Resolution seeks experienced mediators and lawyers to volunteer for these competitions. We need lawyers experienced with interest-based negotiation to judge the students in the competition. We also need mediators (lawyers and non-lawyers) to serve as mock mediators. To volunteer for the regional competition please contact the regional contact listed individually below.

Volunteers for the national competition are offered a registration discount for the Section of Dispute Resolution Spring Conference. To volunteer for the national competition in New York please fill out this form.

For more information please contact Matthew Conger at

Boskey Essay Contest

The James Boskey ADR Writing Competition is named in memory of James B. Boskey, an intellectual, humanitarian, Seton Hall University law professor, and mediator.  The purpose of the competition is to create greater interest in the field of dispute resolution among all law students of the nation, particularly the Law Student Division of the American Bar Association.

For more info, forms, and procedures

Entries for the competition must be submitted by June 17, 2016

Chicago, IL
June 2-3, 2016

This two day comprehensive, interactive training in advanced arbitration skills and best practices will be presented by a panel of nationally recognized arbitrators and arbitration advocates. The experts will present the major topics in arbitration in plenary sessions followed by small group discussions facilitated by the faculty. Break-out concurrent sessions will also be held on special issues like international, construction, employment and securities arbitration, and a practicum will be held for arbitrators on award writing and for advocates on writing an effective arbitration clause. Keynote speakers at lunch each day will cover the role of the arbitrator in settlement, and will review current trends and hot topics in the field.

For more information and to register

Seeking Leadership Applications

The Section of Dispute Resolution is seeking applicants from section members who are interested in taking on a leadership role with one of the Section Committees, as a member of the Section Council, or as an Officer of the Section, for the Bar Association year 2016-2017. Leadership in the Section of Dispute Resolution comes with substantial benefits. Learn more about Section Leadership positions and the application and nominations process here.

The ABA is seeking applications for the position of Director of the ABA Section of Dispute Resolution in the ABA’s Washington DC offices. For more information see the position announcement.

The National Center for Appropriate Dispute Resolution in Special Education is seeking a Dispute Resolution Specialist. See the position announcement on the CADRE web site.

New York Law School
International Dispute Resolution: Skillful Client Representation in Mediation and Arbitration of Cross-Border Commercial Disputes

Members of the ABA Section of Dispute Resolution qualify for discounted registration

DATES: Monday June 13 to Friday June 17, 2016, 9:00 a.m. – 1:00 p.m.
TIME: Breakfast from 8:30 a.m. Courses from 9:00 a.m. to 1:00 p.m.
CLE: 18 credits in Professional Practice; 2 credits in Ethics
Early Bird Price:

(Register before April 15, 2016)
General: $2,249
NYLS Alumni and ABA DR Section Members: $2,049

Regular Price:
(Register on or after April 15, 2016)
General: $2,399
NYLS Alumni and ABA DR Section Members: $2,199

To Register:


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Arbitration Rules for Patent Infringement Disputes
By Donald R. Dunner and John M. Williamson

John M. WilliamsonDonald R. Dunner

Patent infringement disputes often exhibit the classic characteristics that make arbitration a tempting alternative to traditional litigation. For instance, given that the disputes usually involve complex technical subject matter and expert opinions, the parties may benefit from an arbitrator with specialization in the technical field. Similarly, because large patent infringement disputes often traverse national boundaries, one well-crafted ADR proceeding can supplant multiple expensive enforcement proceedings in disparate national courts. And while certain jurisdictions are notoriously slow to reach final judgment in patent infringement disputes, parties to arbitration are likely to reach final resolution relatively quickly. In sum, arbitration befits certain patent infringement disputes, delivering advantages of relative speed, expertise, and efficiency. Read the Full Article

Emergency Arbitration Fast, Effective and Economical
By Peter L. Michaelson

Peter L. Michaelson

Where a party needs immediate legal relief, emergency arbitration can often provide it. I will first discuss the emergency arbitration process, particularly its historic roots and what the process constitutes in the context of the AAA Commercial Rules, and then describe an actual emergency arbitration I handled this past summer for the ICDR in an international IP dispute (for those readers who just can't bear to wait, a copy of the award is provided in Appendix A). Read the Full Article

New ADR Program at USPTO
By David L. Newman

David L. Newman

The United States Patent and Trademark Office (USPTO) has announced that it will encourage participants in post-examination proceedings at the Patent Trial and Appeal Board (PTAB) to use procedures such as mediation and arbitration. The USPTO received significant input from the Alternative Dispute Resolution (ADR) Committee of the American Bar Association IP Section prior to issuing its announcement. Read the Full Article

The Bespoke Clause Tailoring Federal Rule 68 to Arbitration for a Better Fit
by Abigail Pessen

Abigail Pessen

One of arbitration’s great benefits is the opportunity it offers parties to design a process custom-tailored to their needs. Regrettably, this opportunity is often overlooked and a “one size fits all” arbitration clause adopted instead, frequently borrowing the Federal Rules of Civil Procedure en masse. Although such wholesale adoption of the Federal Rules is anathema to the arbitration community, Federal Rule 68 might be a useful stand-alone import, and indeed would have far more oomph in arbitration than it does in federal court litigation. This article accordingly describes Rule 68’s features and suggests ways in which it might be altered and incorporated into arbitration clauses. Read the Full Article

Technical Assistance Agreements in International IP Arbitration
by Philip D. O’Neill, Jr.

Philip D. O’Neill, Jr.

It is an understatement to say that the development and implementation of weapons, surveillance and other security related systems do not always go according to plan. While defense industry dispute resolution shares many common features with regular commercial cases, there are industry specific attributes that add a complicating layer for agreement drafters, as well as for advocates inheriting the forum and procedures selected contractually. Intellectual property (IP) disputes in particular well reflect the uniqueness of challenges presented in the defense industry when things go wrong. Read the Full Article

Copyright 2015© by the American Bar Association. All rights reserved. This information or any or portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

The materials contained herein represent the opinions of the authors and editors and should not be construed to be those of either the American Bar Association or Section of Dispute Resolution unless adopted pursuant to the bylaws of the Association. Nothing contained herein is to be considered as the rendering of legal advice for specific cases, and readers are responsible for obtaining such advice from their own legal counsel. These materials and any forms and agreements herein are intended for educational and informational purposes only.