IM-MEDIATE NOT LITIGATE

The use of ADR to resolve intellectual property (IP) conflicts is a subject that “lies at the intersection of two rapidly growing branches of law.” IP comprises exclusive rights to novel ideas as contained in tangible products of cognitive effort, which, due to its complexity and need for expert evidence, creates a lengthy and expensive litigation process. Mediation has the potential to offer an inexpensive, faster and more user friendly solution for the protection of IP rights and also for the defence against claims that can be brought or threatened by larger corporations against SME’s or individuals, by way of intimidation due to the threat of extensive legal costs and it should be mandatory.

The evolution of the Intellectual Property Enterprise Court (IPEC) in london, has gone some way to reducing the burden of IP litigation, since its inception. The court is run by a specialist IP judiciary, who manage the cases, so that discovery and the use of expert evidence is kept to a minimum. There are three case Tracks, the Multi-Track (MT) for cases with a value in excess of £50,000, a Fast Track (FT) for cases valued between £25,000 and £50,000 and a Small Claims Track (SCT), for cases worth £10,000 and £25,000. Damages and costs are capped. The SCT in particular, is of particular benefit to holders of IP rights that are valuable to the holder, but which do not have extensive commercial value, as there are fixed costs of £260 and IP owner can conduct the case as a litigant in person. The IPEC also sits on circuit in a number of court centres around the country, where the specialist judges hear these cases. The weakness in the SCT is that injunctive relief is not yet available, unlike in the MT and FT. This undermines the benefit of these reforms to IP litigation, as the Claimant in an IP case is more often seeking an injunction than an award of damages, the object being to bring the infringing act to a conclusion.

An alternative way to bring a swift end to infringing activity is to mediate. In a global world where the markets are chasing ‘The Next Best Thing’ most businesses cannot afford to litigate, either time wise or cost wise. Once a product is successful in getting to market, other creators are looking to cash in on that success by creating something newer and better. IP must be enforced in an efficient, effective and proportionate way. When a report to evaluate the IPEC was published in June 2015, all respondents stated that litigation was typically a last resort, but there were a number of negative comments on the usefulness of ADR/mediation and the Report did not find strong support for expanding its role. There was however, a view that the Allocation Questionnaire could be redesigned to force parties to take further steps to convince the court that they had engaged in settlement or mediation negotiations before commencing litigation. This is insufficient and shortsighted and contrary to the findings of the 2006 Gower’s Review which focused on the use of alternative methods of dispute resolution, which not only provide a low cost alternative to litigation but could help to avoid the negative aspects of conflict, such as damage to reputation, lost customers, damage to company morale, as well as the large costs implications.

At the date of the Gower’s Review, the cost of mediating was £3,000 with a high proportion of cases, 70%, referred to mediation, going on to reach settlement. The World Intellectual Property Organisation (WIPO) established the WIPO Arbitration and Mediation Centre in 1994 on a not for profit basis. This has been recognised as an international and neutral forum and the Centre also works as a resource centre to raise awareness of the valuable role that ADR can play in different sectors. As the Gower’s review pointed out, mediation and other ADR methods are currently poorly used and understood for IP. The old Department for Constitutional Affairs (DCA) promoted the use of ADR for years, but some judges were reluctant to encourage parties to mediate and large companies were also reluctant to engage, in case they were perceived as being weak. The Gower’s Review recommended strengthening the Practice Directions to provide greater encouragement for parties to mediate, which would raise the profile of mediation with the judiciary. The Review hesitated to impose further incentives to mediate, such as mandatory mediation as individuals have a right of access to the courts under Article 6 of the Human Rights Act 1998. This view does not bear scrutiny because mediation does not prevent access to the court system, it is an alternative method or resolution or an early step in the overall litigation process.

A working example can be found in the Philippines, where the Intellectual Property Office (IPOPHL) has taken steps to establish a strong and balanced IP regime that is conducive to business and industry. One of the challenges to the enforcement of IPR’s in the Philippines was the speedy disposal of cases and to address that concern, a number of reforms were introduced and implemented. One of these reforms was the introduction of the mandatory referral of IP cases for mediation. Once a case had been filed in the Originating Office, it was referred to ADR Services and the parties can choose between IPOPHL or WIPO mediation. Amongst the Best Practices in Mediation identified by the IPOPHL, was the mandatory referral for mediation, which gives the parties an opportunity to explore their own option for settlement without necessarily limiting their position in the litigation process. There is also the benefit that as the mediation is mandatory, parties such as large corporations will not see themselves as being weak by participating in it, as they have no choice.

Mediation has been described as the ‘sleeping giant of IP disputes’ and in the US, its use in patent disputes has been lauded. In addition to the many benefits that ADR provides to the parties, judges are seriously looking for new ways to reduce their caseloads and are turning to ADR to assist with case management, as referring a case to ADR means that between 60 to 80% of the time, the case will settle, thereby relieving the judges caseload. In the UK, the use of mandatory mediation may be the best method of early case management for IP judges, who then have the benefit of taking the case once the issues have been narrowed down, prior to the pleading stage. The Gower’s Review and subsequently, the Hargreaves Review in 2011 both missed a valuable opportunity to encourage this scheme in the UK.

Whilst the IPEC may be less overburdened than other sections of the legal system after the Covid 19 lockdowns, there will undoubtedly be a backlog of cases. On a positive note, the use of remote hearings has proliferated in the last 18 months and this cannot be underestimated in the overall reduction of costs. The UK Intellectual Property Office (IPO) which has long offered a mediation service, now offers that service online. The IPO website sets out details of the service, but the cost of mediation is about £250 per person for an eight hour mediation session, with the price reduced accordingly for shorter sessions. This compares to just over £400 per person plus room hire, for the same period of time.

The IPO mediation service represents a particularly cost effective way for individuals and SME’s in particular, to settle IP disputes with the assistance of an experienced IP mediator. The IPO has the independence, expertise and resources to provide mediation in a cost effective way, if the Government were to make it mandatory. This would reduce the burden on the IPEC and the judiciary and ensure that IP right holders could obtain maximum benefit from their IP. There is no detriment to the parties from engaging in this process and there is everything to gain. There will still be cases that proceed to litigation, but early independent intervention has the potential to take the heat out the situation and identify what exactly the parties are hoping to achieve, whether that is injunctive relief or a financial settlement.

JANE FOULSER MCFARLANE © 2021

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