Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

New service provided by the UK Intellectual Property Office (IPO): mediation for effective IP

dispute resolution.

Peter Back

Divisional Director

UK Intellectual Property Office

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Mediation

What’s it all about?

And

Why are we doing it?

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

What’s it all about?

• What is mediation?

• How does it differ from litigation?

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

A different direction

Litigation/arbitration looks backwards

Mediation looks tothe future

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Interests v PositionsLitigation/arbitration is based on the parties’

positions

Mediation focuses on the parties’

interests

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

What about privacy?

Litigation is [generally] public

Mediation is confidential

[So is arbitration]

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Who is in control?Litigation - the judgeArbitration - the arbitrator

Mediation -

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

More creative

A judge must follow rules

Mediation opens the door to new and

imaginative solutions

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Speed and cost

Mediation is fast and cheap

Litigation is slow and expensive

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

SummaryMediation ....

… looks to the future, not the past… goes to the heart of the problem… is private and confidential… leaves you in control of the outcome… offers creative, individual solutions… is cheaper and faster than litigation

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

UK Intellectual Property Office

Why are we doing it?

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Origins

Woolf Reforms (Overriding Objective)

What we say … Tribunal Practice Notice 1/2000“Office will routinely ask parties whether they have considered ADR and, where appropriate, will provide them with information about ADR. The Office will be prepared to stay proceedings in those cases where ADR is being used or seriously considered.”

But we were not doing this

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

OriginsAbout 60% of the inter-partes patent disputes before the IPO are entitlement issues and are therefore issues where mediation may be appropriate.

So, what did we do?

Talked to interested parties

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Seminar in London

Meeting of interests in June 2005Patent AttorneysTrade Mark AttorneysMediation providersGovernment DepartmentsProminent IP JudgesAnd others

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

General consensusMore use should be made of Mediation in IP disputes

Not easy to do this

Lack of central source of information and guidance

Need for easy access to mediators

Need for neutral venue

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

General consensusThe IPO is well placed to facilitate mediation in IP disputes by:

Providing a venue

Providing administrative support

Providing access to a list of mediators

Providing its own mediators

A couple of dissenting voices

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

So, what have we done?The UK IPO Mediation Service was launched in April of2006

Four of us have received mediation training from CEDR and are accredited

Full details are available on our web site

http://www.ipo.gov.uk/p-mediation.htm

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

The service so far

• Is now being used on a regular basis

• 7 or 8 times a year

• Most reach settlement

• Satisfied customers• “May I just reiterate my thanks to you and Steve for a

superb job yesterday. I know that you both worked very hard behind the scenes. It was professional, thoughtful and deeply impressive” – patent attorney

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Questions?