Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Intellectual Property (3rd edition)
There is no mandatory system in relation to non-court enforcement options or dispute resolution mechanisms to be elected for intellectual property disputes.
No non-court enforcement options or dispute resolution mechanisms are mandatory in respect of intellectual property disputes pursuant to Norwegian law.
No mandatory mechanism of such nature is available in Mexico. All of them are only optional for the parties.
At present, we are still exploring a diversified mediation mechanism for intellectual property disputes.
They are not mandatory, though courts will always seek to reach a settlement between private individuals.
No such mandatory options/ mechanisms are provided for in the respective IP laws.
Courts independently examine the credibility of the evidence submitted by the parties by applying various rules of thumb.
Theoretically, parties can request witness examinations and the court can conduct witness examinations to determine disputed facts or to determine the credibility of evidence. However, courts rarely conduct witness examinations in IP litigation. Such rare situations include, for example, where inventorship is disputed, or where public use prior to the filing date is disputed.
They are only mandatory if the dispute is based on a contractual matter where the contract provides for pre-agreed non-enforcement options and/or dispute resolution mechanisms before resorting to state courts or arbitration proceedings.
The Brazilian Code of Civil Procedure determines that, unless both parties expressly state that they do not wish to go through a mediation procedure, it will be carried out within the lawsuit, that is, in court, before the case moves to trial. Other than that, there is no mandatory non-court enforcement option or dispute resolution mechanisms.
In the UK, the Civil Procedure Rules require litigants to engage in the "Pre-Action Protocol". Under this protocol, the Claimant should provide details of the claim and the basis on which it is made, the facts of the case and details of what the Claimant is seeking, and the Defendant should confirm whether the claim is accepted and, if not, why not.
However, the court will not expect the Pre-Action Protocol to be complied with where, among other things, telling the other party would defeat the purpose of the application or the urgency of the application is such that it is not practical to comply.
If a Claimant does not comply with the Pre-Action Protocol, it must inform the court that it has not done so and the Defendant may have additional time to file its Defence. There may also be cost consequences for the Claimant at the end of the case, when the court determines responsibility for legal costs.
There are no mandatory out-of-court dispute resolution mechanisms.
Pursuant to the article 56 of the French Civil Proceedings Code (CPC), unless otherwise justified by the urgency or the issue at stake, the claimant must specify in the writ of summons the actions undertaken to amicably resolve the dispute. In the absence of any attempt to reach an amicable solution, the judge may suggest to the parties to initiate a conciliation or mediation procedure.
Non-court enforcement is not mandatory. However, in order to avoid bearing of costs if the defendant in court proceedings accepts the claim immediately, it is advisable to send a prior warning letter and request a declaration to cease and desist.
Under Italian Law the claimant does not have to comply with any preliminary requirement or condition such as dispute resolution mechanisms or non-court enforcement options before commencing judicial proceedings.
As previously mentioned under 17, Law 4512/2018 initiated compulsory use of mediation in legal disputes arising from patent, trademark and industrial design infringements. However, application of said law has been suspended until 16 September 2019
All the non-court enforcement options or dispute resolution mechanisms are optional for intellectual property controversies.
There are no mandatory non-court enforcement options or dispute resolution mechanisms as such, however, it is noted that, as discussed above, some proceedings may be filed before the Comptroller of Industrial Property, such as patent revocation proceedings, while others would have to be filed before the Patents Tribunal. There are also matters relating to trademark oppositions which are dealt with by the IPRD. Matters relating to an authorised collecting society or orphan works would also need to be addressed to the Copyright Board.
No. Adopting Alternate Dispute Resolution is subject to agreement between parties.
The Civil Dispute Resolution Act 2011, in conjunction with the relevant Court Rules, require that parties to civil disputes take ‘genuine steps’ to resolve disputes prior to commencing litigation in the Federal Court or Federal Circuit Court of Australia.
In practice, this means that an applicant is required to prepare a ‘genuine steps statement’, which specifies the steps that have been taken to try to resolve the issues in dispute. If no steps have been taken, it must specify why no such steps were taken, which may relate to, but are not limited to:
(a) the urgency of the proceedings;
(b) whether, and the extent to which, the safety or security of any person or property would be compromised by taking such steps.
If an applicant files a genuine steps statement, a respondent is then required to state either that the respondent agrees with the applicant’s genuine steps statement, or that is disagrees in whole or in part.
When exercising its discretion to award costs, the Court may account whether a person required to file a genuine steps statement complied with that obligation and took genuine steps to resolve the dispute.
In the United States, there are no mandatory non-court enforcement options for IP disputes.