Mediator Resume

Arbitrator and Mediator; Intellectual Property Attorney (patent, trademark, copyright, unfair competition); Chemical Engineer (process design engineer; consulting engineer); Computer Programmer. Please see other sections of this resume for details.

The Law Office Of Stephen P. Gilbert

Attorney, Arbitrator, and Mediator

The Law Office of Stephen P. Gilbert, 2011 - Present; Partner/Co-Leader of its Intellectual Property Client Service Group (2007-2010), Bryan Cave LLP, 1988 - 2010; Partner/Associate, Stiefel Gross & Kurland (and predecessors), 1985 - 1988; Associate, Fish & Neave, 1978 - 1985; Associate, Arthur Dry & Kalish, 1976 - 1978; Consulting Engineer, Chem Systems Inc., 1973 - 1976; Chemical Process Engineer, Scientific Design Company, 1969 - 1973; Computer Programmer, International Paper Company, 1967 - 1969.

Generalist who is also an IP attorney, with decades of experience in all aspects of intellectual property law (65-70% patent, 20-25% trademark, and 5-10% copyright) and related areas (unfair competition, trade regulation/antitrust, corporate, employment, etc.), including: litigation; appeals; counseling; opinions; infringement, patentability, validity, state-of-the-art, and registrability searches and studies; oppositions; revocations; transactional and due diligence; licensing; and prosecution. Handled patent matters in many areas, including electrical (e.g., television, radar, RFID, communication satellites), information systems, business methods, Internet, website, software (e.g., financial, medical), mechanical (e.g., rotary filtration equipment, diesel engines, toys, medical devices and prostheses, box manufacturing, valves, airplane winglets), and chemical and biotech (e.g., organic and inorganic chemicals, pharmaceuticals, biologicals, monoclonal antibodies, medical assays, pulp and paper, cosmetics, polymers, and genetics). Patent litigation concerned, e.g., biodegradable plastics, blowing agents for polyurethane foams, cephalosporin antibiotics, surgical devices, sorters/collators for copying machines, wall covering systems, hard and soft contact lenses, palletizing and packaging equipment, clothing, and electrical connectors for batteries. Patent reissue, reexamination, interference, and patent term extension proceedings. Trademark and copyright matters involved, e.g., software, perfume, sporting goods, laboratory equipment, candy, gas stations, motel chains, music, books, advertising, and photographs. Handled matters involving unfair competition, advertising clearance, rights of privacy/publicity, moral rights, theft/misappropriation of trade secrets, confidentiality agreements, disclosure agreements, material transfer agreements, employment agreements, works made for hire, architectural works, US Customs, ITC Section 337, technical data export licenses, antiboycott compliance rules, and valuation of intellectual property. Pre-Law Technical Experience: Seven years' experience as a chemical process design engineer and consulting engineer and three years (part-time) as a computer programmer. Most of the work as a chemical engineer concerned petrochemicals (e.g., styrene, ethylene oxide, glycols, maleic anhydride, fluorinated hydrocarbons, nylon), petroleum refinery operations, coal gasification, and cogeneration and included conceptual process design, equipment design (e.g., chemical reactors, distillation columns, heat exchangers), and economic evaluation. Helped design and supervise construction and installation of research laboratory pilot plant for synthesis of methane; designed, built, and installed large high-temperature acoustic muffler needed to permit pilot plant to operate. The work as a programmer involved a variety of languages and various machines.

MEDIATOR in provider-administered and self-administered two-party and multi-party commercial, licensing, technology, and intellectual property disputes in which the principal issues concerned, for example, patents (e.g., for explosive devices, illumination apparatus, separation mechanisms, clothing, fibers/films/non-woven structures, automobile security systems, cleaning of underwater equipment, exercise equipment), copyrights (e.g., for architectural plans, computer files, advertising copy, website design, music, recordings, photographs, compliance materials, movies, restaurant decor), trademarks (for consumer goods, photographic goods, household furnishings, foodstuffs, beverages, jewelry, clothing, membership in environmental organization, charitable fundraising events), trade secrets (e.g., for customer lists, engineering information, pricing information, trading of luxury assets, blockchain trading platforms), bioinformatics, clinical data structuring, and molecular sequencing, loan guarantee (for real estate purchase/development), indemnification (e.g., by a licensee/sublicensor of its sublicensees), pharmaceutical marketing rights, professional services partnerships, subsidies for clinical provision of drugs, diagnostic apparatus intellectual property, digital books, aerospace technology, employment/headhunter services, party goods, over-the-counter (OTC) preparations and related intellectual property, website control/maintenance, nuclear medicine, online real estate auctions, COVID testing, dissolution of real estate partnership. Amounts in dispute ranged up to about US$50 million. Parties were US and non-US small, medium, and large business entities and individuals. MEDIATION PANELS: American Arbitration Association Commercial Master Mediator Panel and ICDR Panel of International Mediators; International Institute for Conflict Prevention & Resolution mediation panel; Silicon Valley Arbitration & Mediation Center mediation panel (Tech List); World Intellectual Property Organization List of Mediators and Arbitrators; U. S. District Court for the Southern District of New York mediation panel; New York City Bar Association Mediation Panel for Attorney Disputes. Also listed as a mediator with the Chartered Institute of Arbitrators, London Court of International Arbitration, and United States Council for International Business (USCIB) of the International Chamber of Commerce.

Issues concerned ownership of patents, patent infringement, ownership of copyrights, copyright infringement, counterfeiting, trademark infringement, false advertising, trade defamation, cyber-piracy (concerning, e.g., domain name registration), ownership of websites, misappropriation of trade secrets, theft of artwork, fraud in the inducement, breach of fiduciary obligations, LLC operating agreements, violation of financial terms of loan, breach of mediation settlement agreement, insurance contributions, obligations of loan guarantor, bankruptcy, indemnification, scope of contractual rights, breach of non-competition clauses, quantum meruit, unjust enrichment.

Mediator Style: If parties in a commercial dispute have agreed to mediation, they want to reach a non-litigated resolution and believe they need a mediator’s help. Thus, for the typical commercial case in which there is not a significant power imbalance between the parties, my style will principally be facilitative, with increasingly “challenging” ex parte questions to the extent necessary (e.g., “Please help me understand how you are going to prove that?” “I know you don’t think this will happen, but if a judge, jury, or arbitrator came in 100% for the other side, what might be the reasons for that?”). My style will be adjusted as needed. The most important ability of an ADR neutral is to listen, and the most important part of a neutral is an open mind. A neutral must earn respect and engender trust. Process Preferences: I prefer to hold an organizational meeting with Counsel (and I suggest Counsel invite their parties/clients) to: assure them of my strict adherence to confidentiality and neutrality; learn a bit more about the case (e.g., relationship of parties to each other, status of dispute, previous attempts to settle, previous disputes they may have had with each other); ask what familiarity parties and counsel have with mediation; explain about my potentially asking “challenging” questions; ask what information each side thinks it needs to be in a better position to assess its situation, and work with counsel to try to find a way to get each side that information; discuss the contents of the confidential mediation statements I would like to receive; set a schedule; discuss and select a modality (e.g., videoconference platform, in person, or hybrid) and location for the joint mediation session if in person; point out the need to have decision-makers participate in the process, including attending the joint session; attempt to build trust; etc. I review the confidential mediation statements, which desirably are not more than 10 single-spaced pages in length and which ask Counsel to reflect on things they may not have previously considered (e.g., possible outcomes, and most likely outcome, if there is no mediated resolution; the minimum each party believes it must have from the other side), speak with each side ex parte one or more times after I have read both statements, and thereafter hold the joint mediation session. My experience is that this sort of groundwork before the joint mediation session increases the chances of mediation success (and sometimes a joint session is not even needed because resolution is reached through the ex parte calls).

Regularly use ZOOM (and, to a lesser extent, other videoconference platforms, e.g., TEAMS) for preliminary and other hearings (including multi-day evidentiary hearings) in arbitrations, for organizational sessions, ex parte sessions, and joint sessions in mediations, and for meetings in non-ADR work. Routinely act as host for such ZOOM hearings, sessions, and meetings.

Columbia University School of Engineering & Applied Science (BSChE-1968; MSChE-1971) (master's degree thesis proposed and evaluated a method for predicting thermodynamic activity coefficients); Fordham University School of Law (JD-1975).

Admitted to the Bar: New York (1976) and District of Columbia (1990); U.S. District Court: Southern (1977) and Eastern (1981) Districts of New York; U.S. Court of Appeals: Seventh (1980) and Federal (1982) Circuits; U.S. Patent and Trademark Office (1976-Patent Attorney Registration No. 27,893); U.S. Supreme Court (1980).

Fellow, College of Commercial Arbitrators (CCA) Fellow, Chartered Institute of Arbitrators (CIArb) Fellow, American College of e-Neutrals (ACESIN) Member, National Academy of Distinguished Neutrals (NADN) Member/Panelist (Tech List), Silicon Valley Arbitration & Mediation Center (SVAMC) Member, New York International Arbitration Center (NYIAC) Member, London Court of International Arbitration-North American Users' Council (LCIA) Member, Association for Conflict Resolution-Greater New York Chapter (ACR-GNY) Member, American Bar Association (ABA) Member, New York State Bar Association (NYSBA) Member, Association of the Bar of the City of New York (NYCBA) Member, New York Intellectual Property Law Association (NYIPLA).

Author, “Dealing With Privilege Claims In Commercial Arbitration,” DISPUTE RESOLUTION JOURNAL, AAA (forthcoming 2026). Co-Author, “Arbitrating Technology Cases: Considerations for Businesspeople and Advocates,” chapter in ADR ADVOCACY, STRATEGIES, AND PRACTICE FOR INTELLECTUAL PROPERTY AND TECHNOLOGY CASES (3 ed.), ABA (2025). Co-Presenter, “Ethics For Neutrals: Recognizing The Ethics Issues That Might Slip Under Your Nose—Part II,” NYS Bar Assn., Dispute Resolution Section (March 2025). Co-Presenter, “Ethics For Neutrals: Recognizing The Ethics Issues That Might Slip Under Your Nose—Part I,” NYS Bar Assn., Dispute Resolution Section (December 2024). Co-Presenter, “Not Business as Usual: Techniques for Resolving Life Science Disputes,” Silicon Valley Arbitration & Mediation Center (2020). Author, “Strategic Planning for Contract-Based Disputes,” NYS Bar Assn. (Corp. Counsel Section), INSIDE, vol. 38, no. 1, pp. 36-40 (Spring 2020). Author, “Third-Party Arbitration Summonses: Some Helpful Practice Pointers,” ABA, Section of Litigation, ADR (May 23, 2019). Author, "Dealing With Experts And Expert Evidence In Commercial Arbitration," NYS Bar Assn., NEW YORK DISPUTE RESOLUTION LAWYER, vol. 12, no. 1, pp. 10-13 (Spring 2019). Author, "Dealing With Damages In Commercial Arbitration," DISPUTE RESOLUTION JOURNAL, vol. 73, no. 3, pp. 67-107, AAA (2018). Moderator/Co-Presenter, "Damages In Commercial Arbitration," College of Commercial Arbitrators Annual Meeting (2018). Co-Author, "Mediation Best Practices Guide For The In-House Counsel: Make Mediation Work For You," CPR (2018). Co-Author, "Arbitrating Technology Cases: Considerations for Businesspeople and Advocates," chapter in ADR ADVOCACY, STRATEGIES, AND PRACTICE FOR INTELLECTUAL PROPERTY AND TECHNOLOGY CASES, ABA (2017). Author, "Arbitrating Disputes In The Life Sciences/Biotech/Pharmaceutical/Medical Device Field," College of Commercial Arbitrators website (2017). Author, “Removing Anger in a Mediation Allowed Parties to Settle,” The Blog of The CPR Institute (April 12, 2017). Co-Presenter, “Dispute Resolution for IP Claims: Lessons and Strategies,” Law Seminars International, Tenth Annual Conference on “Advanced Concepts in Licensing IP and Technology” (August 2015). Co-Presenter, "Awarding Attorneys' Fees: The Art And The Science," ABA, Dispute Resolution Section, 17th Annual Spring Meeting (April 2015). Co-Presenter, “Ethics in Mediation: Lessons for Neutrals and Advocates,” LAWLINE “Bridging the Gap” CLE Presentation (December 2014). Co-Presenter, “Principles on which to Anchor Awards of Attorneys’ Fees and Costs in Arbitration: The Art and the Science,” College of Commercial Arbitrators Annual Meeting (November 2014). Co-Author, “Guidance Note: Arbitration And Social Media," posted at CCA website (August 15, 2014). Author, "Prevailing Parties And Attorneys' Fees," DISPUTE RESOLUTION JOURNAL, vol. 68, no. 2, AAA (November 2013). Co-Author and Co-Presenter, “Getting The Arbitration Process Parties Want And Need—Drafting Arbitration Clauses,” CLE course presented at law firms under auspices of College of Commercial Arbitrators (2013-2014). Principal Reviser, New York City Bar Assn., “The Amended Rules for Association-Sponsored Mediation And Arbitration Among Lawyers” (2012). Co-Presenter, “Effective Use Of Experts In Mediation And Arbitration,” Association For Conflict Resolution – Greater New York Chapter Annual Meeting (June 2011). Co-Author, NY State Bar Association White Paper, “The Benefits Of Mediation And Arbitration For Dispute Resolution In Intellectual Property Law” (January 2011), reprinted in NYS Bar Assn., NEW YORK DISPUTE RESOLUTION LAWYER, vol. 4, no. 2, pp. 61-65 (Summer 2011). Author, “Arbitrating To Avoid The Markman Do-Over,” DISPUTE RESOLUTION JOURNAL, AAA (August/October 2006). Please see www.spgadr.com for full list.

New York City area

Hourly Rate: $590.00 Daily Rate: Not provided Study Rate: $590.00/hr Cancellation: Not provided Cancellation Period: Not provided Comment: Reimbursement for reasonable out-of-pocket disbursements (e.g., travel, lodging, meals). Cancellation policy: reimbursement for travel time and for reasonable out-of-pocket disbursements (e.g., travel, lodging, meals) incurred because of cancellation. Available to serve nationwide in addition to in and around New York City.

English

United States of America

Larchmont, New York