Speakers from China, India and Singapore discuss latest developments in cross-border mediation for IP disputes in webinar for Licensing Executives Society members
Panel speakers (from top left clockwise direction): Lionel Tan, President of LES Singapore, Joon-Nie Lau, Deputy CEO of SIMC, Lakshika Joshi, LES India Chapter secretary and Fu Neiqi, Deputy Director of Public Affairs at CCPIT, Hangzhou Committe
The Singapore International Mediation Centre recently partnered with the Licensing Executives Society (LES), Singapore Chapter to jointly organize a webinar on innovative approaches in mediation for cross-border disputes relating to intellectual property rights (IPR).
Moderated by Mr. Lionel Tan, President, LES Singapore and Partner, Rajah & Tann Singapore LLP, the event on 23 January 2024 brought to the fore latest developments in the resolution of IPR disputes through mediation. The panel of speakers consisted of Ms. Lakshika Joshi, Senior Director Legal - Capgemini IP Office and Group Legal Lead for Capgemini Software Frameworks & Solutions; Ms Joon-Nie Lau, Deputy CEO, Singapore International Mediation Centre; and Mr. Fu Beiqi, Deputy Director, Legal Affairs Department of the China Council for the Promotion of International Trade (CCPIT), Hangzhou Committee. The informative session on a range of topics concluded with an engaging round of Q&A.
Ms. Lakshika Joshi, who is also LES India Chapter secretary, highlighted LES’s perspective on the use of ADR mechanisms for settlement of a range of IPR disputes. She started with a brief overview of the benefits of ADR and how “alternative” dispute resolution is now becoming “appropriate”. She also shed light on a 2011 judicial decision that delineated the rights that cannot typically be arbitrated upon (those relating to rights in rem), and those rights that can be resolved through the private dispute resolution process (those relating to rights in personam). In the context of intellectual property rights, Ms. Joshi explained that rights such as patentability would not be amenable to arbitration. However, where individual persons’ rights are involved, such as in a licensing dispute, such a dispute would be arbitrable. Given that mediation is beginning to establish its ground alongside arbitration as a more formalised alternative ‘private’ dispute resolution mode, how these disputes may be mediated, she suggests, will be interesting to see.
She then turned to the newly enacted Mediation Act of 2023, explaining the circumstances surrounding the establishment of the law and highlighting key provisions. She discussed how the Mediation Act interacts with the Commercial Courts Act, 2015 and the impact of this interaction on IPR disputes. She discussed the scope of mandatory mediation and referred to judicial decisions which have had the chance to deal with the requirement of mandatory pre-institution mediation, as provided for in Section 12A of the Commercial Courts Act, 2015.
Offering a perspective from Singapore, SIMC’s Ms. Joon-Nie Lau described the facilitative form of mediation usually used in cross-border disputes at SIMC, and particularly the institutional advantage that organisations such as SIMC bring to the mediation process. She also gave an update on the most recent parties to ratify the Singapore Convention on Mediation, which include Japan and Nigeria.
Highlighting the over 70 per cent success rate of commercial mediation, Ms. Lau shared two case studies involving intellectual property rights where parties decided to attempt mediation. She offered interesting insights into the considerations that impacted parties’ decisions to opt for resolution of their disputes through mediation. Interest in keeping costs low and the desire for high confidentiality stood out as two highly regarded considerations. Citing these cases, Ms. Lau explained how parties were able to secure outcomes through mediation that may not have otherwise been possible through litigation. For disputes before the IPOS Registrar, she encouraged companies to tap into the mediation grant scheme by the Intellectual Property Office of Singapore (IPOS) which offers parties up to S$14,000 (US$10,000) to cover legal and mediation costs.
Finally, Ms. Lau shared about SIMC’s expanding collaborations in China, India, Indonesia, Japan, Singapore, Turkiye and Vietnam, including one with CCPIT Hangzhou, before handing the floor to Mr. Fu Beiqi of CCPIT Hangzhou to elaborate.
Mr. Fu started by recounting developments made in Hangzhou towards the promotion of mediation in IPR disputes. He discussed the launch in 2020 of the China (Hangzhou) Intellectual Property International Commercial Mediation Cloud Platform, which serves as a model platform for resolution of IP disputes through online mediation. Mr. Fu highlighted that the platform had received 28,109 cases as of 17 January 2024 since its inception. Of this number, 8,696 cases resulted in successful mediation with a grand rate of 100% compliance. He also highlighted the impressive number of 1,400 mediators who have served on the platform. Interestingly, SIMC joined the cloud platform in late 2022 as its first foreign mediation service provider. Mr. Fu attributed the platform’s user-friendly design – from application for initiation of mediation to the completion of the process – as a key factor in improving the efficiency of dispute resolution in this area. He also highlighted that the Platform may be utilized by foreign parties.
With cross-institutional arrangements such as the one between SIMC and CCPIT Hangzhou above, and the Mediation-Arbitration and Arbitration-Mediation-Arbitration protocols that exist between SIMC and the Shenzhen Court of International Arbitration and the Singapore International Arbitration Centre respectively, companies have a range of dispute resolution options to pick from, depending on the jurisdiction where enforcement might ultimately be sought.
Find out more by watching the webinar recording HERE.
About the writer
Meghna Jandu is an LL.M. candidate at the National University of Singapore, with a specialisation in international arbitration and dispute resolution. As an intern with the Singapore International Mediation Centre, she has contributed to varied initiatives in the organisation. Meghna previously worked as a Judicial Clerk at the High Court of Delhi, India. Prior to her engagement as Judicial Clerk, she worked as litigation counsel in a New-Delhi based law firm, focusing on civil and commercial disputes. Meghna's professional pursuits are directed towards developing a comprehensive expertise in appropriate dispute resolution, encompassing arbitration, mediation, and litigation.