OHIM IP Mediation Conference 2: Institutional ADR and responses to it

The second session of today's OHIM IP Mediation Conference, moderated by this Kat, featured a stellar list of representatives of institutional IP mediation. Ignacio de Castro (Deputy Director, WIPO Arbitration and Mediation Center) opened the session, pointing out that more than half of the disputes before the Center go to mediation.  33% of WIPO mediations lead to arbitrations, which can be quite effective. WIPO's newly updated rules come into force in a few days; they provide for a large list of mediators -- more than 1,500 worldwide, covering all areas of IP -- but this is still not enough and WIPO often has to go beyond this. WIPO provides online docketing facilities.

Patents are the most popular topics for WIPO ADR, followed by IT; trade mark disputes are relatively uncommon. Within this, there has been a shift from pharma to telecom-related patents, even covering FRAND and standard-essential patents. Settlement rates are high (70% in mediation, high in arbitration too). March 2013, WIPO published a survey on patent and copyright dispute resolution covering some 400 respondents. 91% concluded agreements with parties from other jurisdictions; 80% for technology patented in multiple jurisdictions. It has been difficult to attract users to the services

Next to speak was Steve Probert (Senior Mediator, UK IPO), who introduced the audience to the team of five trained in-house IP mediators, who are supplemented where necessary by a panel of selected outsiders. Steve pointed out that the IPO's fee structure was negotiable, so people are free to haggle.  The IPO's services covers all and any aspects of a mediation, and will address disputes at any stage, even post-judgment if necessary. Mediation gets a boost in England and Wales from judges who push parties towards it before trial and want to know why they haven't opted for it when the time for judgment comes. What can go wrong, Steve asked? Sometimes when the parties have reached an agreement on the substantive issues, there can be a residual problem as to whether one party contributes to the other party's costs. Another problem arises when a party has to keep stopping in order to take third party advice.

Joana Borralho de Gouveia (Chairman of ARBITRARE, Portugal) then took the audience through the services of her organisation, which is competent to resolve disputes ranging from domain names through to industrial property and reference medicines.  ARBITRARE offers information, mediation and arbitration services; arbitral awards have the same legal status under Portuguese law as court orders.

Parties are initially invited to participate in mediation in person and while accompanied by their legal representatives. However, participation through Skype is also permitted and, on the two occasions on which it has been invoked so far, it has worked well.  The mediation stage is not normally allowed to extend beyond 30 days, though in exceptional cases a further 15 days may be allowed.  Mediators are trained and are appointed by ARBITRARE, though the parties are free to appoint a mediator of their choice if they so desire. Proceedings are offered both in Portugal and in English.  In terms of statistics, from 2009 to date some 165 proceedings have been filed, of which only 4 have accepted mediation and just one mediation has been concluded.

An agreeable location for mediation?

Sam Granata (Unified Patent Court Mediation and Arbitration Center) then introduced us to a body of which none of us has yet had experience.  As a Belgian judge and a former mediator in private practice, Sam gave a multifaceted picture of the legal theory underpinning the UPC, its current structure with local, central and regional divisions, as well as the practical possibilities. The UPC's Mediation and Arbitration Center is to be based in Lisbon and Ljubjlana (left).   Only one Article in the UPC Agreement covers the Center, which won't come into force till the requisite number of 13 ratifications (including France, Germany and the UK) have been received. It is hoped that, by the end of the summer, the Center's rules will be approved.
As for its operation, the Center is only competent for mediation and arbitrations of patents falling within the scope of the UPC Agreement: does this include opted-out patents, for which that Agreement provides?

Coming from an International Trademark Association (INTA) perspective, Carsten Albrecht (Attorney-at-law and Mediator, FPS Fritze Wicke Seelig) explained the organisation's role, and that of its ADR Committee -- which has 58 members and three subcommittees covering outreach, programming and "neutrals" (which creates documents and materials for mediators and exercises a degree of quality control). Of the 136 mediators on the group's panel, over 80 are from the United States but the number of non-US mediators, and those with capabilities in languages other than English, is increasing.  INTA does not provide a physical location and does not lay down the specific rules.

Last year around 450-470 mediations came through INTA with a 70-80% success rate -- which is impressively high.  But why are there not more? Is it that mediation is only chosen when litigation is too expensive or where the courts are not trusted? Does it depend on whether it is judicially encouraged or not? Or is it just a matter of cultural tradition?  How can we improve the degree of use, Carsten asked: will it involve changing the attitude of the legal profession? Some people appear to equate a willingness to mediate with a concession of weakness, which should not be so.

Fabio Angelini (Counsel, De Simone & Partners) then spoke from the perspective of the European Communities Trade Mark Association (ECTA), an organisation that is by no means as big as INTA but which still has a sizeable membership -- and an active one.  ECTA has a strong institutional commitment to mediation. Fabio decided to look at IP mediation via what he described as a "totally unscientific survey" of around 150 ECTA members. The survey was basically divided into three sections: "mediation yes", "mediation no" and "mediation why".

More or less 50% of respondents had done an IP mediation, though only around 10% had ever considered the mediation service offered by OHIM. While there is a strong aversion to trying something that is brand new, there is also a pull in the opposite direction from people who want to try something because it's new and it's worth giving it a go.  Fabio then took the audience through a fascinating array of reasons given and attitudes adopted by those surveys.

Closing the session was Théophile Margellos (President of the Boards of Appeal and Coordinator of OHIM`s Mediation Service), who reminded the audience that it was for them that this event was organised and for them that the OHIM mediation service has been offered.  OHIM's mediation service is part of a bigger plan to build a creative organisation. His presentation reminded us of how long it can take a disputed Community trade mark or design matter to pass through the formal administrative and litigation processes of the European Union in the absence of mediation, and he emphasised the organisation's objective of enabling users to benefit from a service which is transparent, which is strictly confidential and from which they cannot lose out. This in turn requires mediators who are strictly impartial and who have easy and direct access to the disputing parties.