Choose Mediation For Your IP Dispute
Mediation offers a cost effective, confidential, non-adversarial, and flexible way to resolve an intellectual property dispute in a timely fashion.
Advantages of mediation
- Neutral facilitator with relevant IP expertise
- Avoids long, expensive litigation or administrative proceedings
- Parties control the process and outcome
- Confidential, so sensitive information can stay secret
- Preserve or develop ongoing relationship between parties
- One proceeding can resolve multiple issues over several jurisdictions, including CIPO, federal and provincial courts
- Potential for global settlement of multiple international proceedings
- Settlement agreements are final, binding and legally enforceable in most jurisdictions
- Settlement terms may include creative commercial solutions that are beyond jurisdiction of court
Success rate for mediation of IP matters
- International experience shows settlement rates over 80% when parties mutually agree to mediation; lower for court-ordered ADR. (WIPO, 2006)
- If “success” is defined as including better identifying, simplifying or reducing the issues in a dispute, almost all mediations are successful.
Factors that make a matter suitable for mediation
- Settlement negotiations are stalled or at an impasse
- Litigation costs are disproportionate to amount in dispute
- One, or both, parties see potential for settlement outside the power of a court or administrative agency (e.g. licensing agreement)
- Courts or administrative agency cannot provide an effective remedy
- Parties are involved in multiple actions and want a single settlement
- Parties want sensitive information and outcome to remain confidential
- The parties have a successful business relationship they want to maintain (e.g. license, joint venture, etc.)
Why choose an IP Neutral instead of a judge or other court official without a fee?
- A court official is only available to the parties once litigation is commenced. Mediation may be a preferable alternative before the expense, entrenched positions and public disclosure of litigation.
- The Trademark Opposition Board does not offer mediation for trademark oppositions or non-use proceedings.
- A privately appointed mediator selected by the parties reflects their mutual choice of a person with suitable qualifications, personality and mediation style.
- Statistics show higher settlement rates when parties mutually agree to mediation and selection of mediator.
- Compared to a court appointed official, a privately appointed mediator selected by the parties may have more:
- relevant intellectual property expertise
- industry or technology expertise relevant to a patent or other technology dispute
- relevant mediation training and experience
- training and/or experience in considering a broader range of issues outside those related to the litigation.
Why not negotiate ourselves?
- Negotiation is always the first choice to resolve an IP dispute.
- But parties often get locked into positions, based on perceived legal rights and negotiating power, insisting on receiving everything they want and refusing to make meaningful concessions, resulting in an impasse.
- Engaging an IP Neutral can help parties and counsel take another look at their underlying interests and overcome these negotiation barriers.
- An experienced IP Neutral can help parties better understand their legal position and potential remedies, based on the facts of any case. (This may also help counsel give their clients a more realistic view of the merits of their case.)
Does suggesting mediation signal weakness?
- Most disputes are resolved by settlement. Mediation is an effective settlement tool.
- In fact, suggesting mediation may signal confidence in your ability to achieve a good settlement because the case is strong.
- Mediation and other alternative dispute resolution approaches such as arbitration are now generally-accepted methods to resolve disputes.
- Many Fortune 500 companies and other businesses have pledged to attempt to resolve disputes by mediation or other alternative dispute resolution procedures prior to, or shortly after, commencing litigation.
(See, for example, the 21st Century ADR Pledge.)
- Lawyers have a professional obligation to advise clients to consider mediation and other alternative dispute resolution procedures. Patent and trademark agents have similar ethical duties to their clients.
Cost of Mediation
- Mediation costs a fraction of what it would cost for a trial or hearing.
- Most mediations can be completed in a day.
- Some complex settlements may take longer, if the mediator is involved in facilitating negotiation of the agreement.
Expenses typically include:
Counsel fees for
– preparing briefs.
– preparing clients for the mediation.
– appearing at mediation.
– preparing minutes of settlement or other agreement made at the mediation.
– Neutral’s fee (typically on an hourly or daily rate).
– Expenses for meeting room and related expenses, if required