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Q: Why mediate an IP dispute?

A: There are many possible benefits to using a mediation process to resolve an IP dispute between parties. Just a few are:

- significant cost savings to the parties to the dispute are likely

- the parties themselves (and not a judge or arbitrator) have a hand in crafting the resolution

- chances are better (than if the matter went through court proceedings) that a business relationship existing between the parties (e.g. licensee/licensor) will be maintained

- a speedier outcome is likely to be achieved

- the disruption and inconvenience to the parties that litigation can bring, for example from document productions and discoveries, can be minimized or avoided, allowing the parties more quickly to get back to their normal business

- the uncertainties the parties and their counsel may face with respect to the final outcome, should the dispute be fully litigated, can be avoided

- a BUSINESS solution suitable to all parties can often be achieved, instead of a legal solution suitable only to one party.

Q: Is mediation binding?

A: Only if you want it to be. A mediator is not a judge or an arbitrator, and does not decide issues between the parties.

The goal of parties entering into a mediation should be to resolve a dispute. If that goal is reached, then a settlement agreement, which WILL be binding on the parties, will be the likely outcome. However, the parties must themselves approve the terms of the settlement agreement before it becomes a legally binding document. Thus, the “binding” nature of any such document arising from a mediation should not be any problem for the parties.

If the parties do not reach an agreement in the mediation, then they are free to take whatever further actions they wish with respect to the dispute.

Q: Why are mediations effective?

A: There are many reasons. For instance, a mediation requires “decision makers” of the parties to the dispute to be present during the mediation. A mediation is designed to let the parties speak IN CONFIDENCE (so that what they say there cannot be used against them by the other side in the dispute), and this may be the first time the decision makers on both sides have heard the other side’s full story on the dispute. This fact alone may lead the parties to a resolution. Also, a mediator is trained to assist the parties to think about creative "out of box" solutions to the dispute. Moreover, mediations are designed to uncover and address the underlying interests driving a dispute, while litigation addresses only the legal positions of the parties. In other words, mediations often result in the entire war, not just a battle, being settled, and a better "deal" being achieved by all sides.

Q: Does a party’s requesting a mediation in an IP dispute suggest that the requesting party is in a weak position?

A: Nothing could be farther from the truth! In reality, requesting a mediation at an early stage of an IP dispute is often just smart business, giving the parties to the dispute a chance to see if the dispute can be quickly (and favourably) resolved before too much time and money have been committed in litigation. Because a mediation is not binding, even the party initially requesting the mediation is under no obligation to come to a settlement during the mediation. That party (as well as any other party to the dispute) can walk away from the mediation if it becomes clear that a mediated solution would not be suitable or cannot be worked out.

Q: What is the best time for mediation of an IP dispute?

A: Often, the sooner the better, for example before the parties have spent too much time and money in litigating the dispute, and before the positions of the parties have become hardened through such litigation. Once the facts of the dispute are reasonably settled (even though there may be disagreement between the parties as to some of those facts), mediation may well prove an effective way to quickly and economically resolve the dispute.

Alternatively, mediations are often effective when they take place at a time during legal proceedings before the parties are about to embark on steps requiring major expense or time commitment for the parties or when the parties are suffering battle fatigue or financial strain from the ongoing litigation.

Q: What types of IP disputes are not well suited to mediation?

A: There are very few that are not well suited to mediation, whether the disputes centre around patents, trademarks, designs, copyrights, trade secrets or a combination of such IP rights. However, the following situations are ones in which mediations generally speaking may not be of much value:

-where counterfeiting is a main issue

-where a party requires a court’s judgment to discourage other would-be infringers

-in some specific types of IP disputes, such as pharmaceutical patent disputes, where there is a general history (or "culture") of antagonism and litigation between “producers” and “generics”

-where significant facts or issues are still to be worked out between the parties (in which case the dispute may not yet be ready for a mediation).

Q: Where can I read more about the mediation process as it applies to IP disputes?

A: I can provide you with a list of reading materials on this subject if you contact me. As a first step, I suggest you read my short paper entitled "THE CASE FOR MEDIATION OF INTELLECTUAL PROPERTY DISPUTES" published in Volume 27, No. 1, of the Canadian Intellectual Property Review of June, 2011.

Q: To mediate my client's IP dispute, I can choose either a court mediation, with a court-appointed mediator, or a private mediator, such as you. Why should we choose a "private" mediator, instead of a "free", court-appointed judge or prothonotary mediator?

A: There are many reasons why a private mediation may be more beneficial than a judicial mediation in a particular IP dispute:

a) A private mediator may well have a significant IP background and mediation training and experience. Most judges and prothonotaries have little or no IP experitise, and many judges may have little formal training in mediations.

b) A private mediation is usually focussed on obtaining a business solution to the dispute. A judicial mediation is more focussed on getting a settlement to remove the case from the court docket, resulting in what some call "positional mediation". One prominent U.S. commentator observes that judicial mediations often try to "hammer people into making concessions until they meet somewhere in the middle" (Bruce Patten in the October 2010 issue of Conflict Management Magazine, posted February 16, 2011 by Eric Van Ginckel on the IP ADR Blog:

c) A private mediator may have developed a more effective mediation process than those used in judicial mediations. For example, I will usually include a pre-mediation step with each set of parties and their counsel, a few days or weeks before the mediation itself. At the pre-mediation, I am able not only to provide the parties and their counsel with information concerning the mediation process, I am able also to obtain information concerning the issues and interests behind the dispute and to advise the parties and their clients as to possible avenues to settlement. This pre-mediation process I have found makes the mediation itself run more smoothly and more efficiently.

d) The costs of a private mediation are very modest and are usually split between the parties.