Workshop Papers 2014

1. Mark Abumeri, US PPH Presentation
This paper highlights the advantages of using the Patent Prosecution Highway (“PPH”) for patent filing in the United States of America via the Global/IP5 PPH Pilot Program. Its sets out the requirements under the Global/IP5 PPH Pilot Program and demonstrates the effectiveness of such an approach through statistics related to allowance rates, office actions, pendency and costs.


2. Keum Nang Park, Taking Control of your IP Dispute Using ADR
This paper first compares the approach of using court litigation to resolve disputes against Alternative Dispute Resolution (“ADR”) mechanisms and then discusses the benefits of using ADR. The paper subsequently highlights the IP-dedicated ADR institutions in Japan and Korea and the requirements and timelines under some of these institutions. The paper then discusses the arbitrability of IP disputes before describing how ADR may be promoted for resolving IP disputes. Where relevant, case studies and statistics have been included to supplement the points raised in the paper.


3. Keum Nang Park, Taking Control of your IP Dispute Using ADR
This paper is a condensed version.


4. Colin Birss, ADR v Litigation in IPR Disputes: One Judge’s Perspective
This paper presents the advantages of Alternative Dispute Resolution (“ADR”) as compared to litigation and shows how the English courts encourage ADR through the Practice Directions and possible costs sanctions. It also highlights the advantages and disadvantages of litigation and ADR when used in cross-border, multi-territorial disputes.


5. Erik Wilbers, A Current View of IP ADR
This paper discusses Alternative Dispute Resolution (“ADR”) in the context of resolving IP disputes. In particular, it addresses the benefits of IP ADR, discusses IPR ADR options provided by WIPO, and makes recommendations, based on survey evidence, on how to structure ADR options effectively for IP disputes.


6. Gwilym Roberts, Unitary Patent and Unified Patent Court – Enforcement and Forum Shopping
This paper discusses Patent Prosecution Highways (“PPHs”) within the global and European context. In particular, it discusses the principles of PPH, maps out current initiatives of PPH and their present reach, evaluates the effectiveness of PPHs, and analyses possible trends and opportunities for PPHs.


7. Hiroyuki Hashimoto, PPH in APAA Countries
This paper discusses Patent Prosecution Highways (“PPHs”) in relation to APAA countries. In particular, it outlines the current overall PPH network, considers the present utilization of the PPH network, discusses key PPH statistics, analyses the benefits of entering into PPH agreements, and evaluates the advantages of PPH compared to other accelerated prosecution schemes.