IP Quick Tip: Alternative Dispute Resolution

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Connect with Pascal Böhner: https://www.bardehle.com/en/team/boehner-pascal

Alternative Dispute Resolution or “ADR” – hence, arbitration or mediation procedures instead of traditional civil court proceedings – has gained momentum in the IP world.

For domain names, for example, there is a well-established practice of resolving disputes in arbitration. But nowadays, ADR has become a hot topic in the patent field, as well. The UPC will have a dedicated Patent Mediation and Arbitration Centre. And arbitration is also a substantial – but maybe one of the most controversial – part of the recently leaked Draft Regulation of the European Commission on Standard Essential Patents. The draft provides for a mandatory but non-binding determination of FRAND terms by the EUIPO in a procedure which seems similar to arbitration.

We may therefore expect that ADR may become more and more important, because it offers quite some advantages over traditional court proceedings: confidentiality, speed, expertise, flexibility, cost, and international enforceability.

But let me address a few key issues when getting involved in mediation or arbitration:

• Prepare thoroughly: ADR proceedings need as much preparation as court proceedings. All facts and arguments supporting your position need to be well prepared.
• Be clear: what is the actual issue to be resolved? Think about narrowing the scope of discussions. An option is to involve an expert both sides agree on who may then give an opinion on specific questions – for example infringement.
• Create a proper atmosphere: arbitration and mediation are not a battle. You want to reach a solution. So don’t be combative or confrontational, listen to the other party's concerns or arguments and be honest.
• Think out of the box: a dispute is often about more than one patent. Be flexible and open to creative solutions and compromises that may not have been considered before, so you can reach a win-win solution for both.