OHIM IP Mediation Conference 3: mediation and its alternatives

First to speak after lunch, in a session moderated by Managing Intellectual Property Editor James Nurton, was vintage Katfriend and one-time Patents County Court judge Michael Fysh QC, on "Advantages of mediation over court proceedings". This paper was principally focused on costs. "What is perceived to be the value of the litigation?" Asked Michael. "How much is a case worth? In an IP case this is almost impossible", at least at the outset, since the IP owner is unlikely to know how much infringement has taken place and how much it will cost to deal with it. It may also not be apparent how strong (or weak) a patent is, since killer prior art can appear from any source and in any language.  Other unknowns include the effect that litigation will have on the time and energy of those people who are personally involved in it, but who will also be expected to do their day jobs.

Other major issues in patent litigation, particularly within Europe, include appointing experts and trying to get them to do what they're supposed to do, the assessment of costs and engagement of forensic accountants, different rules regarding interim relief and disclosure of information, divergent time-scales [like "mediation", the word "urgent" does not appear to have a single shared meaning, this Kat notes].

Design cases are also increasingly complex in Europe today, given the overlay of different IP rights and their respective remedies and defences.  Trade mark cases, which are in theory simple, are tough to resolve given the difficulty of applying Court of Justice rules to the facts of ordinary cases.  Market survey evidence (if admitted), as well as statistical evidence, can be costly.  In all these instances, someone has to pay for this.

Mediations can avoid all of this. A good mediator can be a psychologist as well as a head-banger when it comes to costs, all of which helps both to bring the parties together and to keep them focused. His parting shot -- the one piece of advice Michael offered before closing -- was that, whatever else a mediator does, before he leaves the room he should make sure that whatever the parties have a written and signed version of what they've actually agreed.  If not, he said, it's dollars to donuts that one or other of them will come up with something that's been left out of it.

 Michael Fysh's presentation was followed by a paper, "Negotiation, Mediation and Arbitration: Comparisons and Synergies", by Mark Appel (Senior Vice President International Centre for Dispute Resolution / American Arbitration Association). Negotiation, mediation and arbitration were not mutually exclusive alternatives, Mark said: they were complementary tools that could be used in conjunction with one another.  Points initially made by Mark included the need for familiarity with the industrial sector and with corporate structures, flexibility and other positive indicators for managing dispute regulation. "Fitting the Forum to the Fuss" was a good maxim to follow.

Joined-up: ever
the best policy ...

Mark then described a 2009 study in which 79 businesses in France were examined as to their ADR experiences, coming up with five sets of best practices; much, it seems, depends on the industrial sector.  Considerably less use was made of ADR in France than in the US, possibly because the French had a sense of their commercial courts working well.  In 2013, a further study revisited 13 of these companies. It was clear that they were taking a strategic approach to conflict management. These companies also tended to be involved in many cross-border contracts and tailored their strategic policy to match this. They are also quite joined-up: by cross-checking between divisions of the same company, a third party villain vis-a-vis one division may be trading well with other divisions: delivery of such a person's head on a plate may not there be advantageous. In answer to a question from James Nurton, Mark indicated that the form of dispute resolution management he was discussing was mainly to be found in larger companies, but could be expected to trickle down to smaller businesses in time.