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Mediation – the question no one dares to ask

James Nurton

Many of the world’s leading IP mediators were in Alicante last week for a conference on the subject hosted by OHIM, which offers its own mediation service in appeals cases and has so far seen 10 requests for mediation

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 examples.

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 from it!”

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 promote mediation?

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?


Article Comments

James, you have it right. But not in the way you intended. As an attorney and trained mediator I have learned that in conducting mediation, thinking like an attorney can actually hamper successful mediation. However, recognizing this, being able to understand trademark issues in a legal context can be invaluable in enabling the mediator to understand not only the relative merits of the parties' cases, but the relative risks the parties face due to their actions and situation. It can also help prevent resolutions that inadvertently adversely affect the parties or their IP rights -- a negative effect of arbitration rulings, for example, that include unnecessary or incorrect IP holdings.

James is right in that business people should drive the mediation motorcar. That is, they are the ones who are in the best position to initiate and support mediation efforts. Lawyers should, however, receive training in order to understand how the process works and be able to counsel clients on the benefits and challenges of mediation. In most cases, mediation offers a far more economical and generally effective means for resolving disputes. However, it is the business people who must agree and desire to resolve the matters for mediation to work. INTA has acknowledged the importance of mediation in many cases by establishing a Trademark Mediators Network to provide knowledgeable trademark practitioners who have experience, training and (importantly) desire to utilize mediation to resolve trademark and other IP disputes.

Michael R. Graham Jun 05, 2014

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