Mediation in Intellectual Property disputes

The World Intellectual Property Organisation (‘WIPO’) Mediation and Arbitration Centre defines Mediation as follows:

‘A procedure in which a neutral intermediary, the mediator, endeavours, at the request of the parties to a dispute, to assist then in reaching a mutually satisfactory settlement of the dispute. The mediator does not have any power to impose a settlement on the parties. Mediation is also voluntary in the sense that either party may, if it so chooses, abandon the mediation at any stage prior to the signing go an agreed settlement.’

The Mediation procedure has no formality to it akin to court proceedings and can be very flexible. The agreed mediator (usually a specialist IP lawyer) will engage in confidential discussions with both parties and their lawyers, as well as open discussions when the parties, if they wish, can address each other. Papers are submitted to the mediator in advance of the mediation so that he or she will have an understanding of the issues.

Rather than deal with an IP dispute through the courts, Mediation can be a useful method of achieving settlement and an alternative to the sometimes lengthy and often expensive process of litigation.

There is nothing to prevent parties to a dispute engaging in a Mediation as well as embarking on litigation. Frequently, parties can agree a stay in the litigation to facilitate time to undertake a mediation. Indeed, this is very often actively encouraged by the court which, it is very important to note, can (and increasingly does) penalise parties for not mediating by making costs awards against them – even if they have ultimately been the successful party at trial. This calls into question the definition of ‘successful party’ – is it the party with a judgement on liability in its favour and thus a ‘moral’ victory but also with an order that they pay a hefty sum by to the ‘loser’ by way of their costs?

Mediation can also be more attractive to the parties because it can offer them something which a court cannot. Whereas a court is most often concerned with whether or not to award damages (or an account of profits) and if so how much - a mediator can explore all kinds of alternatives and the parties can agree to settle for any kind of remedy. For example, the parties might agree to enter into some form of licence of the IP rights which would allow the infringing party to continue to use the right in question but subject to the concerns of the IP rights owner being addressed.

For further advice contact our team direct or talk to your usual contact in the firm