May 18, 2017

May 2017 - Intellectual Property

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.

The Intellectual Property Committee provides educational programs for Committee members on cutting-edge topics such as Patent ADR: When and How to Use ItEmergency Arbitration of IP Matters Under the ICDR Rules, 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
IP Committee Co-Chairs


Alternative Dispute Resolution Methods as Applied to Post Grant Proceedings before the Patent Trial and Appeal Board of the United States Patent Office
By William J. Campbell

The America Invents Act created three proceedings that can be used to challenge a patent in a trial proceeding before the Patent Trial and Appeal Board (Board) of the United States Patent Office (USPTO), an Inter Partes Review (IPR), a Post-Grant Review (PGR), and the Transitional Program for Covered Business Method Patent Review (CBM). More than 6,500 of these post-grant petitions have been filed since September 2012 and, of those, more than 90% have been IPR proceedings. Read More

Preparing for Mediation in the Patent or Technology Case
By Jeffery J. Keyes and David A. Allgeyer 

You can be sure of one thing:  if you have a patent or technology case pending in court, you will end up in a session to settle it. This will be before a mediator, before a judge or magistrate in a settlement conference, or both. Because over 95% of cases settle, this may well be the one chance you have to present, in some form or other, the merits of your case and advocate your client’s interest. It is tempting to forego detailed mediation preparation and, instead, focus on the positional bargaining you know will occur at the mediation session. That is not a good idea. Being prepared to mediate in the best interests of your client requires a good bit of analysis and preparation. Read More

Arbitrating Patent Disputes — A Strategic Choice
By Merriann Pannarella

Most practitioners are aware of mediation as a potential tool for resolving patent disputes. Mediation affords the parties and their counsel many well-known advantages: privacy, informality, an opportunity for a frank evaluation of the merits, and control, including the ability to manage the costs and the risks of litigation as well as the outcome. Many, however, do not consider whether arbitration might make a better strategic choice over litigation for resolving a patent dispute when an adversarial process is called for. Read the full article as published in the Boston Patent Law Association Newsletter

  • The 2017 AIPLA Spring Meeting will be at the San Diego Marriott Marquis & Marina on May 17-19
  • The 15th Annual Rocky Mountain Intellectual Property & Technology Law Institute will be at the Westin Westminster Hotel in Westminster, CO on June 1-2
  • June 16-17: 5th Annual IBA World Life Sciences Conference in San Diego, CA, USA
  • June 19-20: MCCA's Global TEC Forum, San Francisco, CA, USA
  • September 26: SVAMC & AAA/ICDR's  Smarter, Faster Cheaper Tech Dispute Resolution Conference - New York, NY, USA

Online Dispute Resolution Webinar
By Bill Caprathe

On December 6, 2016, collaboration between the American Bar Association’s Section of Dispute Resolution and Judicial Division resulted in a one-and-a-half hour Webinar entitled “Online Dispute Resolution: What You Need to Know.” The Webinar was co-moderated by Spencer Punnett and Judge Bill Caprathe. Three panelists highly qualified in Online Dispute Resolution [ODR], Colin Rule, Harrie Samaras, and Judge Monty Ahalt, presented their unique perspectives based on their extensive ODR experience. Read More

Section of Dispute Resolution Committees help members access the information and experts necessary to improve their practice, and maybe even the world around them. Just in the last few months, the Court ADR Committee has held educational webinars on research on the effectiveness of ADR in the courts and the use of dispute resolution for prisoner complaints. The Women in Dispute Resolution Committee holds a monthly educational webinar. Recent topics have included E-Discovery, what it is like to practice in an ADR firm, and ADR and online marketing. If you are not a member of a committee, join one today and expand your educational opportunities. You can join committees from MyABA on the ABA web site or from the committee web pages.



10th Annual Arbitration Training Institute
June 15-16, 2017
Chicago, IL

This two-day training will be presented by a panel of nationally recognized arbitrators and arbitration advocates. The experts will describe best practices, followed by small group discussion facilitated by leading arbitrators and advocates. This interactive program will provide you with a unique learning environment and valuable industry contacts.



Practice Development Institute
ABA Chicago Headquarters
July 14-15, 2017
Chicago, IL

This two-day workshop on July 14-15 in Chicago, led by Forrest "Woody" Mosten, provides a practical model for implementing client-centered peacemaking strategies in your profession, including unbundled legal services and innovative dispute resolution tools.

Participants will learn new ways to help clients while staying out of court, and explore the personal and ethical dimensions of collaborative problem solving. Interdisciplinary practitioners will benefit from this training, including lawyers, mediators, mental health professionals, paralegals and financial professionals.

15th Annual Advanced Mediation and Advocacy Skills Institute
Straus Institute at Pepperdine School of Law
October 19-20, 2017
Malibu, CA

This two-day interactive institute features rare opportunities to learn from some of the leading mediators and advocates in North America. Each plenary session panel features an expert mediator, in-house counsel, and a skilled outside attorney, discussing each phase of the mediation process. Small group discussions led by experts in the field follow the plenary session panels.

The opportunity for mediators and advocates to interact in small facilitated groups provides a unique environment to enhance your skill, knowledge and understanding of the mediation process.

Alternative Dispute Resolution Unit training seminar

Upcoming three- day New Jersey Division of Consumer Affairs, Alternative Dispute Resolution Unit training seminar. Here is the requested information you asked for.

This seminar is recognized by the New Jersey Administrative Office of the courts as satisfying its 18 hour mandatory training for court-appointed mediators pursuant to Court Rule 1:40-12. The Unit, established in May of 1992, uses volunteer mediators and arbitrators to assist in resolving a variety of disputes referred from various State agencies.

Mediation Training Seminar to be held on June 12th, 13th & 14th, 2017, 124 Halsey Street, 7th Fl. Newark, N.J. Go to the Divisions web page:

EEOC seeks Pro Bono neutrals

The Phoenix District Office of the EEOC is seeking mediators to be a part of our Pro Bono ADR Program.  The Phoenix District covers the states of Arizona, Colorado, New Mexico, Utah, and Wyoming.  If you are a mediator, familiar with employment discrimination laws, and willing to conduct pro bono mediations, please contact Cherrie Martin, State and Local Program Manager via email at
Reminder:  EEOC Phoenix District Seminars - There is still time to register:  
Phoenix:  June 14, 2017
Albuquerque:  July 12, 2017
Denver:  August 14, 2017
Salt Lake City:  September 13, 2017

The EEOC can also deliver specialized training on any EEO topic covered by the laws enforced by the Commission, including harassment. The fee-based training is delivered in increments of a day; a two-hour (1/4 day) training is $850, a three-hour (1/2 day) training is $1300 and a six-hour (full day) training is $2300. The fee covers the development and delivery of the training and materials. If there are any travel costs for the presenter, the travel fees are in addition to the fees outlined above

Some popular topics:
EEOC Overview (emphasis on preventing discrimination– common mistakes)
Preventing and Responding to Harassment in the Workplace
Conducting Internal EEO Investigations
Americans with Disabilities Act
Unconscious Bias

JAMS has named Wayne Thorpe as its new Chairman of the Board. Thorpe, a past Chair of the ABA Section of Dispute Resolution, has served as a full time neutral since 1998.  He has served as mediator, arbitrator, facilitator, special master and case evaluator in about 2,000 cases in at least 20 states, including many high stakes and complex cases, class actions, MDL’s and other large scale multi-party cases. Thorpe will replace Linda R. Singer, who has served as Chair of the JAMS Board since February 2014.

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.