An International Guide to
Patent Case Management for Judges

12.6.10 Alternative dispute resolution

Generally speaking, except where prohibited by law, or limited in the general public interest or in the interests of third parties, the LEC offers parties the option of recourse to mediation or arbitration for disputes at issue.

When parties in an ordinary trial are summoned to the preparatory hearing they must be informed of the possibility of such recourse to reach a negotiated solution to the dispute. The parties indicate their decision on that point and the reasoning behind it during that same hearing.

At the start of the preparatory hearing, the court may invite the parties to pursue an agreement through mediation or other means and thus dispense with the court proceedings. The court may urge them to attend a briefing on that possibility.

Failing such an agreement the hearing will continue, and after dealing with procedural issues and delineating the facts in the case, the court may urge the parties or their representatives and their attorneys to reach a settlement of the dispute.

In addition to its general provisions, LP-2015 expressly provides for alternative resolution mechanisms for patent disputes, consisting of mediation and arbitration. It also provides for prior conciliation in cases concerning the inventions of employees.

12.6.10.1 Mediation and arbitration

Interested parties may resort to mediation or submit their patent-related disputes to arbitration for matters defined by law as subject to individual discretion.

In the context of patent grant, opposition and appeal proceedings, disputes relating to the fulfillment of requirements for patents to be granted and maintained, and to remain valid, are not matters of individual discretion and thus fall outside the scope of mediation and arbitration.

In the case of arbitration, a final arbitration award has the effect of res judicata, and the SPTO is bound to perform the steps necessary to execute that decision.

Similarly, in the case of mediation, an agreement signed by the mediator and the parties, once recorded as a public deed or confirmed by a court, becomes an enforceable right, and the SPTO must be notified accordingly for the enforcement of that right.

12.6.10.2 Conciliation in respect of employee inventions

As a step preliminary to judicial action based on the applicable governing provisions, disputes relating to inventions in the context of an employment or a service contract relationship may be submitted, if the parties so agree, to a conciliation process before the SPTO.

Disputes subject to such prior voluntary conciliation may relate to patent ownership or economic compensation that may, under certain circumstances, be accorded to the inventor. More specifically, in accordance with article 15(2) of LP-2015, an employee is entitled to compensation, even where the patent is legally owned by the enterprise employing them,⁹⁴ when the personal contribution made by the employee and the importance of the invention for the enterprise clearly exceed the explicit or implicit content of the employment contract or relationship.

If the employee is the legal owner of the patent,⁹⁵ but where knowledge gained while employed by the enterprise has predominantly contributed to obtaining the patent, or where means provided by the enterprise have been used to obtain it, the enterprise is entitled to assume ownership of the invention or to reserve the right to use it in exchange for fair economic compensation.⁹⁶

Public universities and public research institutes may decide to assume ownership of inventions conceived by researchers in their employment. If they do so, the researchers concerned are entitled to participate in the profits the entities earn from exploiting, transferring or assigning their rights to the inventions. If disputes in this regard are submitted for conciliation, a conciliation committee, composed of an SPTO expert serving as chairperson and two other members selected by each of the parties concerned, is assembled to facilitate an agreement and thereby avoid litigation.⁹⁷