There were many
useful and practical presentations and discussions at the
conference (reported at length on the IP Kat blog). But
two things above all struck me.
First is the sheer number of mediation and arbitration
options available in IP cases (one takeaway from Alicante was
the blurred line between those two forms of ADR).
As well as OHIM’s initiative, there is the WIPO
Mediation and Arbitration Center (which marks its
20th anniversary this year), national services such
as that provided by the UK IPO (which has five mediators on its
staff) and INTA’s mediation programme. Then there
are many formal and informal national and international systems
such as Portugal’s ARBITRARE, which was discussed
at the conference. Readers will be able to add their own
And, just to add to the patchwork, the new Unified Patent
Court will include an Arbitration and Mediation Centre, based
in Lisbon and Ljubljana. As Judge Sam Granata said at the
conference, this could present new opportunities for patent
owners in Europe, not least because "no one expects anything
But the second
impression I took from Alicante is that, despite all these
options and the efforts that have gone into promoting them,
mediation is still under-used in IP cases. As many readers will
recall, that was exactly the question addressed in Emma
Barraclough’s recent in-depth article on the
subject in Managing IP ("
Why mediation’s time has come"). Jeremy Lack
(pictured left) described the low interest in IP mediation
as "one of the mysteries of our time".
There was much discussion last week about why this is.
Reasons suggested included: ignorance; the need for precedents
and setting an example; it is not mandatory; the venues are not
convenient; IP cases involve complex issues; IP cases are
subjective; the emotional commitment of inventors and designers
precludes agreement; it is not lucrative for lawyers; and
parties fear being seen as soft.
I don’t doubt that all those factors play a
role. But I think they beg one further question (which I posed
at the conference, though there wasn’t time to
discuss it fully). That is: are lawyers the best people to
I don’t know the answer. On one hand, clearly
they have the knowledge of the law and experience in dealing
with disputes. On the other, they can be too focused on legal
rather than commercial issues, and may be used to trying to win
at all costs rather than seeking compromises.
That’s not to say that lawyers should not be
involved in mediation. But IP cases are ultimately commercial
disputes, and if we agree that more ADR is desirable, then
maybe it’s the businesspeople who need to be
driving the mediation motorcar, with the lawyers in the back
seat – rather than the other way round?