IP Mediation

Jane Lambert

Mediation can best be described as "chaired" or "facilitated" negotiation. It works because negotiations proceed through an intermediary known as "a mediator" who is often privy to information that neither party would disclose to the other. To show how mediation works I have uploaded two case histories: one on the resolution of a computer supply dispute and the other a trade mark opposition (see also Mediating Disputes from the Trade Marks Registry 1 Sept 2005 NIPC Law).

Both the courts and the Intellectual Property Office ("IPO") hearing officers expect parties to consider mediation or some other form of alternative dispute resolution before issuing proceedings. Both have power to penalize parties who fail to do so by, for example, disallowing costs that they would normally have awarded to the successful party or awarding more costs than they would otherwise have ordered the unsuccessful party to pay.

The IPO has recently updated its guidance to Intellectual Property Mediation. According to the guidance most types of IP dispute are appropriate for mediation.though it lists a few that are now. They include:

• trade mark disputes concerning the distinctiveness of the mark
• trade mark opposition and invalidation proceedings on absolute grounds. and
• disputes involving IPO decisions e.g. refusal of a patent application or request for extension of time.

According to the guidance the benefits of negotiation to business are as follows:

• "flexible - it is quicker and cheaper than litigation with a flexibility to allow parties to discuss issues outside the legal arguments (this could be particularly useful in cross-broader disputes)

• less distraction - as mediation resolves disputes quicker than litigation, businesses will spend less time and energy away from their business activities

• broader discussions - unlike a judge, the mediator will allow both parties to have their say in a less confrontational situation to gain a better understanding of each other’s positions and their differences and to explore all aspects of the dispute

• creative solutions - a mediator does not impose a judgement, but rather will help the parties to reach creative compromises which they may or may not chose to make legally binding

• opportunities - mediation offers the opportunity to maintain existing commercial relationships as well as the chance to forge new ones

• no additional delays - in helping the parties focus on the real issues, mediation can save time even if the dispute eventually moves into litigation

• no additional expense - mediation should not create additional expense as it can resolve the dispute with only a skeleton of the issues and legal representatives do not need to be present

• reality check - a mediator can help all parties think through the consequences of not settling the dispute and the risks of litigation

• high success rate - mediation has a high success rate. The large majority of mediations reach an agreement on the day and other disputes reach resolution subsequently as a direct result of the mediation process

• reputation intact - whatever the outcome is, it will remain private (preserving business reputations) unlike a court judgement which will be published on the internet."

The IPO runs a specialist IP mediation service and I have participated in an IPO mediation as counsel (see Practice: Mediation in the IPO 2 Oct 2009 NIPC Law). The service was not used much for many years and the IPO considered terminating the service (see The End of Mediation? 4 June 2012 NIPC Law). Fortunately, it was relaunched (see The IPO's New Improved Mediation Service - will it make a difference? 7 April 2013 NIPC Law). The IPO also lists other mediation service providers and I am glad to say that I am on the list.

A dispute can be referred to mediation only with the agreement of all parties. The best time to get such an agreement is before a dispute arises. Methods of resolving any disputes that may arise should be discussed when parties are negotiating their agreement or businesses are drawing up heir terms and conditions. This is the wording suggested by the WIPO:

"Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]."

If a dispute has already begun you will need a mediation agreement even if mediation has been ordered or recommended strongly by the court. Again, this is the WIPO' suggestion:

"We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO Mediation Rules the following dispute:
[brief description of the dispute]
The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]."

We have three mediators in chambers who specialize in IP law. They are Anthony Connerty, Thomas Dillon and me. If you would like to discuss our services whether as mediators or as counsel with experience of IP mediation, please call us on +44 (0)20 7404 5252 during regular office hours. If you want to talk about this article or about IP or mediation in general you can get in touch through me contact form.