Mediation of Intellectual Property Disputes and IPO Mediation Service

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1 Mediation of Intellectual Property Disputes and IPO Mediation Service Intellectual Property Office is an operating name of the Patent Office

2 1 Mediation Occasionally, disputes can arise in relation to intellectual property (IP) rights. Mediation is a type of alternative dispute resolution, a way of resolving disputes without going to court. It is cheaper and quicker than litigation and the outcome is usually beneficial to all parties. A court will expect you and the other party in dispute to have attempted to resolve matters before starting legal proceedings. It will also expect you to have properly considered a form of alternative dispute resolution. Mediation allows you and the opposing party to talk about the dispute with the help of an independent person, a mediator. The mediator s role is not to make a decision on the dispute but to help you to find a solution that both parties can accept. Most types of IP dispute are appropriate for mediation. In addition to it being cheaper and quicker, there are other advantages. Mediation can: involve discussion of a broader range of issues than those that are the subject of the litigation; result in a positive outcome for all parties involved eg through licensing or commercial agreements; and help parties to maintain or even create business relationships.

3 2 Introduction to the IPO Mediation Service The IPO mediation service was set up to help businesses and individuals resolve IP disputes quickly and effectively. A flexible fee scale has been introduced and it may be possible to arrange mediation over the telephone for some disputes. The accredited mediators can help you to resolve disputes involving unregistered rights, such as copyright and design rights, as well as patents, trade marks and registered designs. The IPO mediation service can help you to resolve: disputes about infringement of an IP right disputes about IP licensing trade mark opposition and invalidation proceedings on relative grounds 1 disputes over patent entitlement eg whether a co-inventor was employee or consultant copyright licensing disputes between collecting societies and users of copyright material regarding the terms and conditions of licences 1

4 3 Some disputes where mediation may not be an alternative to litigation include: trade mark disputes concerning the distinctiveness of the mark trademark opposition and invalidation proceedings on absolute grounds 2 disputes involving IPO decisions eg refusal of a patent application or request for extension of time How Mediation Works If you agree to mediation, you and the other party will be required to sign a mediation agreement. The agreement is to confirm that both parties agree to: use mediation to try and resolve your dispute use one of our accredited mediators the location and sharing of costs associated with the mediation On the day of the mediation the appointed mediator will meet with you and the other party separately, and together, to discuss the issues. Mediation discussions are confidential and cannot later be used in court if the dispute is not resolved. After you have reached an agreement, the mediator will encourage and if necessary help you to record at least the main points of the agreement in writing. This helps to reduce the risk of further disputes that may arise later about what was actually agreed. 2

5 4 A list of other mediation providers is available on the IPO website. For further information on mediation including mediation by telephone and details of costs access our website or contact: mediation@ipo.gov.uk Telephone: Outside the UK Telephone: +44 (0) Mediation Intellectual Property Office Concept House Cardiff Road NEWPORT NP10 8QQ

6 5 Mediation and Business 10 reasons why mediation makes sense for business: 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

7 6 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

8 Concept House Cardiff Road Newport NP10 8QQ Tel: Minicom: Fax: For copies in alternative formats please contact our Information Centre. When you no longer need this booklet, please recycle it. Published: March 2013 DPS/H200 /03-13