Updated: Mediator Philip A. Hannay details added to the Mediation Providers list.
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 e.g. through licensing or commercial agreements; and help parties to maintain or even create business relationships.
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 cases. 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 resolve:
disputes about infringement of an IP right
disputes about IP licensing
trade mark opposition and invalidation proceedings on relative grounds
disputes over patent entitlement e.g. 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
Some disputes where mediation may not be an alternative to litigation include:
trade mark disputes concerning the distinctiveness of the mark
trade mark opposition and invalidation proceedings on absolute grounds
disputes involving IPO decisions e.g. refusal of a patent application or request for extension of time
How mediation works
When you have agreed with the other party to mediate you will both 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.
Benefits to 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
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
Mediation providers for intellectual property disputes
We encourage parties to consider mediation as an alternative to litigation, but they are not restricted to our mediation service and are free to choose who mediates. Some of the many individuals and organisations available have contacted us to say they can mediate Intellectual Property related disputes. It is not appropriate for us to recommend particular providers; however the Civil Mediation Council (CMC) has introduced an accreditation scheme for mediation providers. A list of both CMC and non-CMC accredited providers is available in our guide on
Mediation providers for intellectual property disputes
(PDF, 132KB, 9 pages)
.
Mediation fees
The costs in using the intellectual property office mediation service are available in our guide on
Mediation fees
(PDF, 75.6KB, 2 pages)
.
To use our mediation service or for further information
E-mail mediation@ipo.gov.uk
Telephone: 0300 300 2000
or write to:
Mediation Service
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Please note that you must accept liability for the transmission of any information you send us or ask to receive from us via e-mail.