ADR Clauses For IP
                                 Agreements


                                            J William Fra...
Mediation Clauses

       • Because Mediation is non-binding, there is less
         risk in using a broad clause.
       ...
Mediation Clauses – Samples

         • Broader Clause
                     – Any dispute, controversy or claim arising un...
Mediation Clauses – Samples

         • Narrower Clause
                     – The parties shall attempt to resolve any di...
Arbitration Clauses

         • Because Arbitration is binding on the parties,
           make sure that the arbitration c...
Arbitration Clauses – Narrow vs. Broad


         • Narrower Clause
                     – “Any dispute or difference betw...
Arbitration Clauses – Sample

         A. Any dispute arising out of or relating to this contract, including the
         ...
Multi-step ADR Clauses

         • Many Agreements provide for a series of ADR
           procedures in a particular order...
Multi-step ADR Clauses – Samples

         • Mediation and Arbitration
                     – The parties shall endeavor t...
Multi-step ADR Clauses – Samples

         • Negotiation, Mediation, and Arbitration
                     – The parties sh...
Questions or Comments?

     J. William Frank III
     Of Counsel
     +1 312.263.3804
     jwfrank@mccrackenfrank.com
   ...
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ADR Clauses for IP Agreements

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I prepared this presentation to use at the INTA ADR Zone at the recent INTA Meeting in Seattle. I hope you find these clauses and the information useful.

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ADR Clauses for IP Agreements

  1. 1. ADR Clauses For IP Agreements J William Frank III McCRACKEN & FRANK LLP t: +1 312.263.4700 f: +1 312.263.3990 May 19, 2009 1 © 2009 McCracken & Frank LLP
  2. 2. Mediation Clauses • Because Mediation is non-binding, there is less risk in using a broad clause. • Even without a broad mediation clause, mediation can include a wide range of topics, including things beyond the scope of the agreement, to attempt to settle a dispute. • The clause should include a time limit so that it is clear when litigation can be used. 2 © 2009 McCracken & Frank LLP
  3. 3. Mediation Clauses – Samples • Broader Clause – Any dispute, controversy or claim arising under, out of, or relating to this contract and any subsequent amendments of this contract, including, without limitation, noncontractual claims ancillary to such claims, shall be submitted to mediation in accordance with the mediation rules established by the International Trademark Association (INTA) Mediation Procedures. Unless otherwise agreed, the parties will select a mediator from the INTA Panel of Neutrals. The place of mediation shall be [Insert location]. The language to be used in the mediation shall be [Insert Language]. If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within [Insert number of days] days of the commencement of the mediation, either party may seek whatever relief from the courts deemed appropriate. 3 © 2009 McCracken & Frank LLP
  4. 4. Mediation Clauses – Samples • Narrower Clause – The parties shall attempt to resolve any dispute arising out of or relating to this Agreement by mediation under the rules established by the International Trademark Association (INTA) Mediation Procedures. Unless otherwise agreed, the parties will select a mediator from the INTA Panel of Neutrals. Mediation shall begin within [Insert number of days] days after one party provides a notice of a dispute to the other party. Only if the mediation has not concluded within [Insert number of days] from the notice of dispute shall a party have the right to seek relief from the courts. The mediation shall occur at [Insert Location] or at such other location on agreement of the parties. The mediation shall occur in [Insert Language]. 4 © 2009 McCracken & Frank LLP
  5. 5. Arbitration Clauses • Because Arbitration is binding on the parties, make sure that the arbitration clause only includes subjects that you want arbitrated. • Many U.S. Courts, particularly Federal Courts, tend to interpret arbitration clauses broadly. • If there are specific subjects that are not to be subject to the obligation to arbitrate, these subjects should be expressly listed as exceptions in the Agreement. 5 © 2009 McCracken & Frank LLP
  6. 6. Arbitration Clauses – Narrow vs. Broad • Narrower Clause – “Any dispute or difference between the parties directly arising under the agreement ...” • Broader Clause – “Any dispute or difference between the parties arising out of or relating to this agreement ...” • If there are specific topics the parties do not want to be subject to arbitration, to be safe these should be specified in the agreement. 6 © 2009 McCracken & Frank LLP
  7. 7. Arbitration Clauses – Sample A. Any dispute arising out of or relating to this contract, including the breach, termination or validity thereof, shall be finally resolved by arbitration in accordance with the CPR Institute for Dispute Resolution Rules for Non-Administered Arbitration then currently in effect, by [number of arbitrators and method of appointment] arbitrator(s). The arbitration shall be governed by the Federal Arbitration Act, 9 U.S.C. §§ 1 et seq., and judgment upon the award rendered by the arbitrator(s) may be entered by any court having jurisdiction thereof. The place of arbitration shall be [Insert Location]. B. The arbitration clause of Section A shall not apply to the following disputes, which will be litigated in a court of law: any dispute concerning the validity, ownership or control of the trademarks, any action in equity necessary to preserve the status quo between the parties. 7 © 2009 McCracken & Frank LLP
  8. 8. Multi-step ADR Clauses • Many Agreements provide for a series of ADR procedures in a particular order. Typically these escalate from less binding to more binding: – Direct Negotiation then Mediation – Mediation then Arbitration – Direct Negotiation then Mediation then Arbitration • Make sure the time period between ADR types is long enough to provide a reasonable time to settle, but short enough to minimize “game playing.” 8 © 2009 McCracken & Frank LLP
  9. 9. Multi-step ADR Clauses – Samples • Mediation and Arbitration – The parties shall endeavor to resolve any dispute arising out of or relating to this agreement by mediation [Continue with balance of Mediation Clause]. Any controversy or claim arising out of or relating to this contract or the breach, termination or validity thereof, which remains unresolved [45] days after appointment of a mediator, shall be settled by arbitration [Continue with balance of Arbitration Clause]. 9 © 2009 McCracken & Frank LLP
  10. 10. Multi-step ADR Clauses – Samples • Negotiation, Mediation, and Arbitration – The parties shall attempt to resolve any Dispute promptly by negotiation between executives who have authority to settle the Dispute and who are at a higher level of management than the persons with direct responsibility for administration or performance of this Agreement. Any party may give another party written notice of any Dispute (“Notice”). If the Dispute has not been resolved by negotiation within [45] days after delivery of the Notice, then the parties shall endeavor to settle the Dispute by mediation [Continue with balance of Mediation Clause]. If the Dispute has not been resolved by mediation within [45] days after appointment of the mediator, then either party may submit the Dispute to arbitration [Continue with balance of Arbitration Clause]. 10 © 2009 McCracken & Frank LLP
  11. 11. Questions or Comments? J. William Frank III Of Counsel +1 312.263.3804 jwfrank@mccrackenfrank.com MCCRACKEN & FRANK LLP 311 South Wacker, Suite 2500 Chicago, IL 60606 t: +1 312.263.4700 f: +1 312.263.3990 www.mccrackenfrank.com These materials should not be regarded as legal advice or opinion, nor do they create an attorney-client relationship. 11 © 2009 McCracken & Frank LLP

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