Alan Limbury

Location of service: 
Nationally via digital, NSW
Services offered via digital means: 
Yes, via videoconference, Skype and MODRON
IP Right: 
Patents, Trade marks, Designs
Organisation: 
Strategic Action Pty Ltd t/a Strategic Resolution
Contact: 

Address: 2 Crown Street Woolloomooloo, NSW 2011

Email: expert@mediated.solutions

Phone: 02 9368 0274

Mobile: 0412 104 809

Pricing: 
$726/hr (inc. GST); No daily fee
Proficient languages: 
French

Mediation experience

Alan has been mediating since 1986 part time and since 1996 full time, with wide experience as sole mediator in over 2,000 commercial and intellectual property disputes of all kinds in Australia, New Zealand and the UK, in which parties are usually legally represented. He is frequently chosen as mediator by parties ordered to mediate by the Federal Court of Australia and the NSW Supreme Court. He frequently mediates small business and retail tenancy disputes and also has experience mediating healthcare complaints and farm debt disputes. He was described in the 1996/97 edition of Legal Profiles as 'the leading practitioner' in ADR in Sydney; by The Times of London in June 2007 as "the leading Australian mediator"; and by Who's Who Legal: Mediation 2014, 2015 and 2016 as "one of the 10 most highly regarded commercial mediators in the world".

One particular IP mediation Alan conducted under the WIPO Rules some years ago in London is described on the WIPO website (Example M1 at http://www.wipo.int/amc/en/mediation/case-example.html).

Other intellectual property dispute mediations included:

  • Alleged infringement of a national trademark by the importation of genuine goods from the overseas owner of the same mark;
  • Conflict between wine companies over use by a former subsidiary of the parent's trademark;
  • Patent infringement and revocation proceedings resolved by licensing arrangements (permissible under competition law) requiring the parties to operate in different market sectors while protecting them both under the patent;
  • Conflict in the wine industry between appellations of origin and common law trademarks;
  • Whether the requirements entitling a winemaker to claim an appellation of origin had been met;
  • Whether a building design infringed copyright;
  • Whether a copy of a product no longer covered by a patent was made using trade secrets of a competitor;
  • Whether the patent office was right to grant a patent despite numerous objections;
  • Whether contracts to provide Information Technology to Government departments were properly performed;
  • Franchisor/franchisee disputes;
  • Motor vehicle dealership termination; and
  • The scope of licensed and retained technology rights.

Alan has participated either as judge or as mediator in every one of the International Commercial Mediation Competitions for students held in Paris by the International Commerce Commission since 2006 and has been Co-Chair of the Problem Drafting Working Group for several years.

Mediation qualifications

  • Trained in negotiation and mediation at Harvard University in 1986, 1987 and 1991.
  • Trained in mediation by ACDC, 1986; CDR Associates, Colorado, 1988; Institute of Arbitrators Australia (Advanced), 1989; Law Society of New South Wales (Advanced), 1993 and University of Technology, Sydney (Advanced), 1993.
  • Specialist Accredited Mediator, Law Society of NSW, since 1995. LEADR Advanced Mediator, since 1997 (now Resolution Institute).
  • Accredited Mediator, Institute of Arbitrators & Mediators Australia, 2005-2012 (now Resolution Institute).
  • Accredited as an Experience Qualified Mediator under the Australian National Mediator Standards since 2008.
  • International Mediation Institute Certified Mediator since 2011.

Specialist experience and qualifications

  • BA (Hons.)(Jurisprudence), University of Oxford, 1963; MA 1968.
  • Master of Dispute Resolution (MDR), University of Technology, Sydney, 1997.
  • Barrister, United Kingdom (Inner Temple), 1964.
  • Legal Practitioner, High Court of Australia and Supreme Courts of the Australian Capital Territory, New South Wales, Queensland and Victoria (from 1965).

1964-1996:

  • Commercial litigation lawyer in Sydney law firms.

1976-1996:                         

  • Partner, Minter Ellison, Sydney. Chairman, Trade Practices, Intellectual Property and Alternative Dispute Resolution Groups (the latter being the first established in Australia - in 1988). Wide experience as a litigation lawyer at trial and on appeal in commercial disputes, including intellectual property (trade marks, patents, copyright and confidential information), restrictive trade practices, unfair competition and administrative law.

Some examples in the field of IP:

  • Smith Kline & French Laboratories and Ors v Secretary to the Department of Community Services & Health: [1989] FCA 384; [1990] FCA 151; [1991] HCA 13; [1991] FCA 150 and Smith Kline & French v Commonwealth [1991] HCA 43 (Confidential Information).
  • Aktiebolaget Hassle v Alphapharm [2002] HCA 43 (Patent infringement and validity - obviousness).

Since 2000 :                       

  • Experience in 11 domestic commercial arbitrations raising issues of contractual interpretation, misleading and deceptive conduct, intellectual property rights, international technology licensing, margin lending and estoppel.
  • Continuing experience as arbitrator in over 550 domain name disputes.

Current positions:

  • Managing Director, Strategic Resolution, an ADR consultancy.
  • Assistant lecturer in Negotiation (postgraduate) and Dispute Resolution (undergraduate and postgraduate) at the University of New South Wales.
  • Senior Fellow, Melbourne Law School, teaching Mediation of Commercial Disputes. Member of several mediation and domain name arbitration panels around the world. Honorary Life Member, Business Law Section, Law Council of Australia.
  • Life Member, the Law Society of New South Wales
  • Associate member, Crown Office Chambers,  Inner Temple, London

 

Additional information

As regards digital mediation, although Alan's preference is for face-to-face mediation because it can be both more efficient and more effective, he has found videoconferencing to work well, provided that the definition is of high quality. Email takes much longer and is prone to arouse suspicion unnecessarily. He acted as a beta tester for MODRON, an app that enables the mediator to use a variety of methods, including Skype, telephone and open and private chatrooms, and found it very useful.

 

Previous positions and activities:

  • Distinguished Fellow, International Academy of Mediators (2016).
  • Adjunct Professor, Faculty of Law, the University of Sydney, teaching Mediation (2009- 2010).
  • Chartered Arbitrator and Fellow, Arbitration and Mediation, the Chartered Institute of Arbitrators, (2005-2010).
  • Professional Dispute Board Member, the Dispute Board Federation (2008-2009).
  • Chairman, Standing Expert Committee on ADR, Law Council of Australia (member 1989- 2009).
  • Deputy Chairman, National Electricity Tribunal (1998-2007). Member, Health Services Advisory Committee, NSW (2001-2007).
  • Chairman, Complaints Resolution Panel to determine advertising complaints under the Therapeutic Goods Regulations and member, Therapeutic Goods Advertising Code Council (1998-2006).
  • Member, Administrative Appeals Tribunal (Commonwealth of Australia) (2001-2004).
  • Founding member and director of LEADR (now Resolution Institute), (Chairman 1991- 1993).
  • Chairman, Business Law Section of the Law Council of Australia (1987-1989) and of its Trade Practices Committee.
  • Member, Advertising Review Expert Committee concerned with Trans-Tasman harmonization of therapeutic goods advertising (2002).
  • Conciliator under s.89 of the Health Care Complaints Act 1993 (NSW). Legal advisor to the Medical Services Committee (NSW).
  • Member, the Australian Institute of Company Directors.
  • Founder member of the Licensing Executives Society, Australia.

 

Publications include:

  • Hybrid Processes and Inadmissibility: Who's Who Legal Briefing, October 2016 http://whoswholegal.com/news/features/article/33249/hybrids-inadmissibil...
  • "Some Aspects of Mediation in Australia" Vadim Abolonin, Svetala Zagaynova (eds) Kommercheskaya mediatsia; teoria i praktika, lnfotropic Media, Moscow, 2012.
  • "Should Mediation be an Evidentiary 'Black Hole"'? UNSW Law Journal Volume 35(3) 914, November 2012.
  • "Getting the best of both worlds with Med-Arb": Law Society of NSW Journal, September 2010, Vol. 48 No. 8, 62-65.
  • "Resolving IP disputes by mediation": Law Society of NSW Journal, August 2010, Vol. 48 No. 7, 75-77.
  • "Should there be a distinct 'Mediation Privilege'?": Chapter Ill, the Newsletter of the Law Council of Australia Federal Litigation Section, March 2009, Vol.2.
  • "Compulsory ADR before proceedings begin?": LEADR Update, March 2009.
  • "Observing mediation from the public gallery – Opes  Prime": LEADR Update, December 2008.
  • "Reaction to Amanda's corner - Mindfulness: expanding the use of mediation in public law and policy making": IBA Legal Practice Division Mediation Committee Newsletter, July 2007.
  • "Whither confidentiality? - Some thoughts prompted by Brown v. Rice and Patel [2007] EWHC 625 (Ch) (14 March 2007)": Chartered Institute of Arbitrators Mediation Seminar "The Experts Speak", London, 11 June, 2007.
  • "An Australian Perspective on Some Topical Issues in Mediation": Chartered Institute of Arbitrators Mediation Lecture Series, London, 20 September 2006, Arbitration, Vol. 73 No. 1 (2007) at p.64.
  • "Online Alternative Dispute Resolution": IAMA News, June 2006, p25.
  • "How should mediators communicate online?": Institute of Arbitrators and Mediators Australia 30th Anniversary Conference, Canberra, May 28, 2005.
  • "Domain Name Disputes: when must trade mark rights exist?": Internet Law Bulletin, Butterworths, March/April 2005, Vol. 8, No. 1, 9-10.
  • "Difficulties and Skills of ODR Mediation Practice": Third United Nations Annual Forum on Online Dispute Resolution, Melbourne, Australia, 5-6 July 2004.
  • "How to Resolve Disputes Online": NSW Law Society Journal, October 2002.
  • "Online Dispute Resolution - A Practitioner's View": Domain Name Systems and Internet Governance Conference, Sydney, May 2002.
  • "The Regulation and Approval of Pharmaceutical Substances": Changing Dynamics in the Pharmaceutical Industry Conference, Sydney, October 1994.
  • "Intellectual Property Litigation in Australia - The Cimetidine Example 1987-1994": ARCS Symposium, Sydney, September 1994.
  • "Alternative Dispute Resolution: How Should it be Used?" (with G.L. Davies QC): Australian  Legal Convention, Adelaide, 1991.
  • "Application of the Trade Practices Act to Intellectual Property" (with Michael O'Bryan): Trade Practices Commission, July 1991.
  • "A Practitioner's View of ADR":  1990 Annual Conference of the Australian Institute of Judicial Administration.
  • "Alternative Dispute Resolution - A Better Way of Dealing with Trans-Tasman Differences": CER and Business Competition - Australia & New Zealand in a Global Economy, CCH, 1990.
  • "Mediation and the Role of the Lawyer in Alternative Methods of Dispute Resolution": Licensing Executives Society Conference, January 1989.
  • “Appellations of Origin": Intellectual & Industrial Property Society Conference, Melbourne, March 1989.
  • "Part of the Impact of the ADR Movement: Focus on Negotiation": University of Sydney Faculty of Law Seminar, October 1987.
  • "How ADR Can Be Used in Licensing": joint meeting of LES Australia & New Zealand and the Intellectual & Industrial Property Society, April 1987.