IP Dispute Resolution Publications

Here are my recent publications on resolution of IP disputes – you can download a copy by clicking on the title.

Private International Law (PIL)
Private international law principles for ubiquitous intellectual property infringement – A solution in search of a problem?Journal of Private International Law, Vol. 13, No. 1 (2017). An empirical study of 56 cases from 19 jurisdictions dealing with cross-border online infringement of IP rights suggests that the harmonized private international law principles currently being developed for transnational IP disputes may not be necessary, as a matter of practice, in most, if not all, cases.

Alternative Dispute Resolution (ADR)
Online Dispute Resolution – the Phenomenon of the UDRP Chapter 16 in Paul Torremans (ed), Research Handbook on Cross-Border Enforcement of Intellectual Property (2014, Edward Elgar, Cheltenham, UK and Northampton, MA, USA). This chapter reviews the history and practical utilisation of the UDRP, and identifies and evaluates the criticisms of the UDRP.

Voluntary Mechanisms for Resolving IP Disputes WIPO/ACE/8/10 (2012). Commissioned for the World Intellectual Property Organization’s Advisory Committee on Enforcement, this report – available in English, French, Spanish, Arabic, Chinese and Russian – considers a variety of voluntary mechanisms, including ADR, undertaken by online platforms and public-private partnerships to address counterfeiting and piracy.

The Evolution of Precedent in Mandatory Arbitration – Lessons from a Decade of Domain Name Dispute ResolutionThe Arbitrator and Mediator, Vol. 30, No. 1 (2011). This paper explores why and how, exactly, the ICANN UDRP system for mandatory arbitration of domain name disputes has evolved a comprehensive and largely non-controversial body of precedent, despite the absence of an appellate body and a doctrine of stare decisis.

Professional Privilege
Patent Attorney Privilege in Australia: Options for ReformAustralian Intellectual Property Journal, Vol. 20 (2009).  Patent attorney privilege – the capacity to withhold communications from a court, should litigation arise - is a key aspect of the relationship between a client and her or his patent attorney. This article analyses the operation of the privilege in Australia and overseas, and proposes options for the reform of the privilege in Australia.

For the Health of the Economy and Patent System: Rationale and Scope of Patent Attorney PrivilegeJournal of Intellectual Property Law and Practice,Vol. 4, No. 1 (2009). This article considers the justifications for patent attorney privilege and suggests that, given the need for clients to have full and frank advice for the effective operation of the patent system, the privilege is justified and should not be unduly limited in its operation.