Vortragstitel

1
5.2
Dispute ResolutionNeeds and Experience
Panelist
Mr. Michael GrossFraunhofer-GesellschaftMunich,
Germany
1
2
Fraunhofer Gesellschaft
- - - -
German non profit RD organisation applied
research/worldwide 58 Institutes staff 12,500
2
3
- - - -
turnover 2004 1,000,000,000 (gt
900,000,000
contract research) 2500 RD-Agreements/year 240
License Agreements/year most popular Licensing
Product MP3
3
4

RD - Dispute Resolution by an
Arbitrator/Mediator/ Conciliator or
negotiations by the RD-partners?
Two Cases - Case 1 - Case 2
Arbitration betweentwo European
RD-partners Mediation between a German inventor
and an US License partner
4
5
Case 1 Arbitration between 2 European
RD-partners
"Acoustic Construction of a Concert Hall"
I. THE PARTIES
German Research Institute - Ministry of a
European Country (contractor)
5
6
II. THE ARBITRATION AGREEMENT
RD Agreement of January 1995 Art. 11
Standard ICC Arbitration Clause
6
7
RD Agreement was established in
gt 2 versions Art. 12
English and another European language (contractor'
s language) in case of disputes the text of the
version of the other European language shall
prevail
7
8
The parties did not agree on - the place of
Arbitration was fixed by the Court
Paris - the language of the arbitration
the Arbitrator ordered English
(written submissions in English accompanied by a
version in the language of the contractor)
8
9
- the applicable law the Arbitrator
ordered
UNIDROIT Principles of International Commercial
Contracts shall be applicable
9
10
III. THE RELIEF REQUESTED
Claimant
191000 interest at the rate of 5 above the
German base rate costs of Arbitration
10
11
Respondent
"Although Art. 11 of the RD Agreement provides
for arbitration as a means of resolving all
disputes arising out of the ontract, we also
object to the jurisdiction of the Court of
Arbitration, as such a general provision
regarding arbitration cannot be valid."
11
12
IV. THE ARBITRATION PROCEEDINGS
- Request for arbitration 20 Dec. 2002 - Sole
arbitrator - No request for an oral hearing by
the parties
12
13
V. AWARD
6 October 2004
191000 interest legal fees and
expenses (of Claimant) costs of arbitration
(US 22000)
13
14
VI. PROBLEMS
1. 2 years 2. Enforcement of the award in the
country of the contractor pending!
14
15
Case 2 Mediation between a German
inventor and an US Licensee
"Monorail or rapid exchange catheter"
(angioplasty procedures)
I. THE PARTIES
German Inventor - US Global Player (Licensor)
(Lisensee)
15
16
II. THE AGREEMENT
Patent License Agreement of June 1986 (3
Amendments) Art. XVI Applicable Law
German law NO DISPUTE RESOLUTION
CLAUSE
16
17
Licensee of 1986 sold its facilities to a
competitor for 2,16 billion 1998 New Licensee
enforced the licensed patent several times in the
US, e.g. by award against a competitor July 2001

17
18
III. THE RELIEF REQUESTED
Under payment of royalties 16 million
18
19
IV. THE MEDIATION
- Request for mediation 24 July 2001 -
Mediation 16 August 2001
in Minneapolis, USA
Start 1000 a.m. (16 August) Settlement
100 a.m. (17 August) Result ???
19
20
Licensee purchased the licensed patent
US 80 million
20
21
V. PROBLEMS
NO PROBLEMS! applause for the inventor!!!
21
22

RD - Dispute Resolution by an
Arbitrator/Mediator/ Conciliator or
negotiations by the RD-partners?
22
23

It depends!
23
24

Wild applause for the panelist!!
24