1. Is mediation likely to lead to a better outcome for the parties than litigation? 

In many cases, mediation may lead to a swifter and broader disposal of a dispute than litigation. Mediation can take account of entire patent portfolios, and related commercial disputes, without the necessity for litigation on a number of national and international fronts. 

2. Is mediation likely to save time and money of the parties? 

This is connected to the first point. Clearly, mediation, as a process, is significantly less time- and capital-consuming than litigation. In addition, the PMAC offers certain incentives to encourage parties to seek to mediate their disputes, even after litigation has commenced. For example, the PMAC offers free of charge online ADR information sessions for partiers; a 50% reduced registration fee; the reimbursement of a significant proportion of the Court fees (65%) in case of settlement before the end of the interim proceedings; a 50% discount in respect of the administrative fee if the  mediation is conducted online; a 50% discount for administrative fee for SME’s; and a short turnaround time for mediations. 

3. Do the parties wish to maintain their business or personal relationship in the future (e.g. licensing, cooperation agreements, market continuity)?

4. Do the parties wish to retain the possibility of obtaining a court decision in case they cannot reach a settlement agreement? 

There is a good deal of flexibility in managing the mediation process. For example, the parties may jointly request the stay of the litigation and attempt mediation (mediation window); or they can elect to run the litigation and mediation in parallel (mediation shadow).

5. Do the parties wish to keep control over the mediation process and the mediation outcome? 

Mediation offers procedural flexibility in terms of process design, choice of mediator, language, and the place and format of proceedings (online, in person, on site). Mediation is a voluntary process, and parties are free to discontinue at any time, with no negative consequences.

6. Do the parties want an expert mediator who understands the legal and commercial dimensions of IP disputes?

7. Do the parties value the confidentiality of mediation proceedings to maintain reputation (media coverage) and safeguard trade secrets or sensitive commercial information?

8. Do the parties wish to avoid potentially divergent and sometimes conflicting decisions in different jurisdictions? 

9. Do the parties wish to explore mediation to avoid duplicative parallel proceedings concerning revocation or infringement of essentially the same patents? 

 10. Do the parties wish to avoid effectively de novo review appeal proceedings? 

11.  Is the real sticking point between the parties a question of money? 

For example, is the real issue dividing parties how much should be paid for a FRAND licensing fee for a patent or portfolio of patents which are asserted to be essential for a given technical standard? If so, then mediation offers a way of "cutting to the chase" in a way that is not possible with litigation, where issues of validity, infringement and/or essentiality must first be determined before the Court can turn to the question of what the FRAND license fee should be. 

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Mediation IN IP Disputes Checklist Document

MEDIATION IN IP DISPUTES CHECKLIST