In my article I ventured some suggestions as to why mediation of intellectual property disputes seemed to be going out of style. At least in England and Wales.
"I think there are a number of explanations for the low take up of the IPO's mediation service. First, commercial and litigation solicitors tell me that they are getting far less intellectual property work nowadays. Getting rid of employees and getting out of commitments such as shareholders; agreements and partnerships seem to be the matters upon which my contacts in northern commercial law firms are consulted most frequently. Secondly, with the new Patents County Court rules the risks and costs of litigation have come down (see my article on the "New Patents County Court Rules" 31 Oct 2010). Thirdly, there are other forms of ADR such as examiners' opinions on patent validity and infringement and domain name dispute resolution services which appeal more to patent and trade mark attorneys and specialist solicitors. Fourthly, there are urban myths in this area of practice such as intellectual property insurance is useless, references to the Comptroller under s.61 (3) of the Patents Act 1977 or, indeed, that there are no specialist intellectual property counsel outside London which lead to bad advice. Fifthly, mediation is getting a bad name because it an extra expense resorted to by the party with the longer pocket to force concessions from the weaker party."
Nevertheless, the IPO carried out a consultation and decided that it was worth carrying on the mediation service.
The Office has re-launched the new service with a number of leaflets which are well worth reading:
- "Resolving IP Disputes" in the IP Healthcheck Series;
- "Mediation of Intellectual Property Disputes and IPO Mediation Service"
- a list of mediation providers which includes me I am glad to say;
- "Mediation and Business"; and
- "The IPO Mediation Service".
Hearing officers seem to be a bit more ready to recommend mediation. I am currently instructed in an entitlement application in the IPO where mediation has been suggested. That did not happen in previous entitlement cases in which I was consulted. I am not sure whether the new small claims track of the Patents County Court will encourage take up. The Guide to the Patents County Court Small Claims Track mentions mediation as one of the available types of ADR but does not recommend it over the others. As I pointed out in "Patents County Court - the New Small Claims Track Rules" 20 Sep 2012 the costs and risks of the new small claims track are so low a party may as well press on for judgment.