Resolving patent disputes

Resolving patent disputes: It's good to talk

This is the one of a series of articles looking at the different ways in which patent disputes can be resolved

This article provides an introduction to mediation.

What is mediation?

Mediation is a form of alternative dispute resolution (ADR). It enables opposing parties to talk openly about their dispute with the help of an independent mediator in a safe, confidential environment. Experience has shown that mediation has a high success rate and often the parties come to an agreement without a court hearing.

If all parties agree to mediation, the mediator will meet with the parties, separately and together, to discuss the issues involved. It is worth remembering that the mediator’s job is not to reach a decision on the dispute but to facilitate exploration of the dispute and also any possible solutions. Overall control of the mediation process lies with the parties involved and it is down to them to decide what solutions, if any, may be agreeable.

Discussions that take place during mediation are confidential and “without prejudice”, that is they are not binding on the parties and cannot be used in subsequent legal proceedings. Similarly, discussions between a party and the mediator are confidential and will not be revealed to the other party without the first party’s consent. If mediation fails, the parties are free to continue with formal legal proceedings.

What are the benefits of mediation?

There are many benefits to mediation:

  • mediation provides a way to settle a dispute on a worldwide basis in a single procedure. This means you can avoid the costs associated with having separate hearings in the UK and overseas.
  • a decision reached following mediation agreement can be beneficial to all parties involved, with the so called “win win” results which may be beyond the powers of the courts to award.
  • provides a swifter settlement of disputes, many mediations are completed in a single day.
  • makes a substantial contribution to the more efficient use of judicial resources.

Under what circumstances might mediation be suitable to resolve intellectual property (IP) disputes?

Where the following factors are present in an IP dispute, it is likely that mediation would be advantageous:

  • the cost of litigation would be disproportionate to the disputed amount.
  • the complexities of law, fact and relations would result in lengthy proceedings with a high possibility of appeal.
  • the issues are highly complex or involve numerous parties.
  • the parties are involved in multiple actions.
  • the parties are deadlocked in existing settlement negotiations.
  • the parties are likely to have a continuing relationship after the dispute.
  • the issues are sensitive or would require the disclosure of sensitive information.
  • the parties desire resolution without publicity.

When might mediation be inappropriate?

Where the following factors are present in an IP dispute, mediation may not be appropriate:

  • a summary judgement is available quickly and efficiently.
  • the parties require emergency injunctive or other protective relief.
  • a legal, commercial or other precedent needs to be set.
  • a settlement of no interest to the parties.
  • publicity is sought by the parties.

Is mediation compulsory?

Mediation is a voluntary process and can only take place if all parties involved in a dispute agree to mediation. Although not compulsory, the Office would always encourage those involved in a dispute to consider mediation as an option for resolving the dispute as effectively and efficiently as possible.

How can I arrange mediation?

We encourage parties to consider mediation as an alternative to litigation. To this end, we have established the UK-IPO Mediation Service to assist customers. However, parties are not restricted to using our service and are free to choose who mediates. We maintain a list of mediation providers PDF document(90Kb) on the UK-IPO website.

Can the Office recommend a non UK-IPO mediator?

It is not appropriate for us to recommend particular providers; however the Civil Mediation Council (CMC) has introduced an accreditation scheme for mediation providers. This is designed primarily for the National Mediation Helpline and County Court mediation schemes, but the accreditation criteria have general relevance. We have therefore highlighted CMC accredited providers at the top of our list.

How can I find out more about mediation?

For more information about mediation services please contact us at:

Search and Advisory Service
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

Tel: +44(0)1633 811010
Fax: +44(0)1633 811020

Email: mediation@ipo.gov.uk