Overview

To focus on themes inherent in the Barreau du Québec’s November 13, 2020 conference on recent developments in arbitration and mediation of intellectual property (“IP”) and information technologies (“IT”), this paper addresses the distinctions between and the promised benefits of arbitration and mediation as dispute resolution methods for IP and IT (“IP/IT”) disputes with reference to the latest Québec case law.

The paper alerts counsel representing parties disputing IP/IT rights (“IP/IT Counsel”) whether, how and when arbitration and mediation can serve as effective options to litigation. The paper does not purport to wordsmith the best terms for agreements to arbitrate, advocate for arbitration over litigation or inventory all opportunities to arbitrate IP/IT disputes. Rather, it informs IP/IT Counsel how to (i) identify which of the various dispute resolution processes qualify as genuine arbitration, (ii) determine if arbitration is appropriate for the resolution sought, (iii) word the scope of the dispute, (iv) choose appropriate remedies to meet expectations, (v) anticipate the nature of post-award judicial intervention and (vi) pre-empt breaches of any promised benefits. After having explored the nature of arbitration, the paper then turns back to a short list of arbitration’s key promised benefits and revisits them in light of specific issues raised by Québec cases.

Following the section on arbitration, the paper considers mediation in which parties can engage before, during and even after the arbitration process. With reference to applicable Québec legislation and cases framing the approach to negotiated settlements, the paper identifies how mediation differs from arbitration and where IP/IT Counsel ought to exercise care when opting to enter into transactions or consent awards when resolving disputes.