United States: WIPO Mediation – A Path To Resolution For Some IP Rights Litigation Cases

Mediation refers to the facilitation of settling disputes between parties by a neutral third party, i.e., a mediator. Although various forms of mediation date back to hundreds of years ago in various places all over the world, including the Middle East and China, mediation gained popularity as a formal method of alternative dispute resolution (ADR) for backlogged courts in the United States in the 1970s. For a mediation to occur, the parties to a dispute typically agree to submit to mediation; however, in some cases, parties can be ordered by judicial authorities to attend a mediation. At mediation, a mediator uses a variety of techniques to help parties come to an agreement that resolves their disputes, typically formally concluded in a written settlement agreement. And, although a strong mediator may challenge one or both sides in efforts to facilitate resolution, the ultimate decision regarding whether, and on what terms, to resolve the dispute always remains with the parties themselves. By reaching a settlement agreement, the parties can return their focus to their primary business pursuits, rather than the cost and distraction of the dispute.

The parties' power of choice is one of the most valuable aspects of mediation. Once a case goes to trial, the parties no longer have a choice over what happens —that is left to a judge or jury. In mediation, however, the parties choose terms they can live with to reach an agreement. The power of choice also separates mediation from other forms of ADR, such as arbitration, where one or more neutral arbitrators are appointed to decide the issues, and which party "wins" the dispute.

Mediation is also cost-effective. Most mediators charge a fixed fee that is less than some attorneys charge clients for a single day of billable time, and the mediator's fee includes preparation time and the time spent mediating the case. A mediation session is often completed within one day, plus some follow-up time if necessary to finalize the settlement agreement. The amount of billable time incurred by a party's attorney to attend the mediation is minimal in comparison to the time required to litigate through trial. Mediations are most cost-effective, of course, when they are successful—a successful mediation terminates further litigation expenses.

Mediation can be a powerful tool for litigants in IP cases, where litigation costs can be more expensive than many other types of litigation due to the complexity of such cases and specific issues unique to IP. Because IP cases have specific issues that are not found in other cases, selecting the right mediator is critical. Although there are no specific laws or rules that require mediators to have specific IP experience in order to mediate IP cases, as a practical matter, a mediator with IP training and experience will usually be far more effective and valuable in an IP case than a mediator who lacks IP experience. The selection of a mediator depends on a variety of factors, including whether a case is already in litigation and, if so, where the litigation is pending, as well the level of cooperation between the parties. In some cases, a court will order the parties to mediate with a specific mediator. In other cases, a court will allow the parties to select the mediator. And yet in other situations, parties may seek to agree to a mediator before the decision is made by a judge for them.

The WIPO Arbitration and Mediation Center ("the WAMC") was established in 1994 to offer alternative dispute resolution (ADR) options for the resolution of international commercial disputes between private parties. Based in Geneva, Switzerland, and with an additional office in Singapore, the WAMC offers access to mediators and other ADR specialists that have been screened by and meet certain criteria to be eligible to provide ADR services. Under the WIPO mediation rules, the parties who have agreed to mediation receive a short list of potential mediators. From that list, each party may delete the name of any candidates that it objects to, and must rank the remaining candidates in order of preference. The WAMC then appoints a mediator from the candidates remaining on the list, taking into account objections and preferences. In situations where the agreed-upon preferred mediators are unavailable or the lists do not indicate a candidate that is acceptable as a mediator to both parties, the WAMC may nonetheless appoint a mediator.

Once the mediator is appointed, a schedule is agreed upon and the mediation is conducted. As is typical in any mediation process, the WAMC-appointed mediator may ask the parties to submit materials prior to the mediation, such as summaries of the case and discussion of issues to assist the mediator in becoming familiar with the case; however, the submission of evidence is not ever allowed as a general rule.

The WIPO mediation rules clearly define the role of the mediator as "promot[ing] the settlement of the issues in dispute between the parties in any manner that the mediator believes to be appropriate," but state that the mediator "shall have no authority to impose a settlement on the parties." WAMC-appointed mediators also may recommend other procedures or means for resolving issues that may not appear to be susceptible to mediation, such as submission to an expert determination of one or more issues, or even arbitration in some instances.

Once mediation is complete, the mediator promptly sends a written notice to the WAMC that the mediation is terminated, when it was terminated, and whether the mediation resulted in a full or partial settlement. The WAMC keeps the mediator's notice confidential and does not disclose either the existence or result of the mediation to any person without written authorization of the parties, except to the extent necessary in connection with an action for enforcement of a settlement agreement or as otherwise required by law.

Overall, the mediation process in a WIPO mediation is the same as any other private mediation in an IP case that is not administered by the WAMC, the main difference being the access to WIPO mediators that have been reviewed and approved by the WAMC. The fees charged for WIPO mediations are also similar to those typically charged by private mediators in IP cases in the U.S., except that the WAMC also charges an administration fee that the parties pay in addition to the mediator's fee. For disputes where the amount of money at stake is up to USD $250,000, parties pay a mediator's fee of USD $2,500 per day (assuming 10 hours of preparation and mediation), plus a $250 administrative fee. Where the amount at stake is over USD $250,000, parties pay representative mediator fees of USD $300-600 per hour or USD $1,500-3,500 per day, plus an administrative fee of 0.10% of the settlement value achieved by the mediation, up to a maximum fee of USD $10,000. For cases where either the parties do not indicate that there are claims for monetary amounts or where the dispute involves issues not quantifiable in monetary amounts, the administration fee starts at USD $1,000 with the possibility for adjustment on further review by the WAMC after consultation with the parties and the mediator.

In summary, properly administered mediation with a strong and qualified mediator can be a very efficient and cost-effective way to resolve IP disputes. WAMC-administered mediations are an effective option for gaining access to mediators that have specific IP training and experience. At the same time, while mediation may be valuable for many cases, it may not be suitable for all cases, regardless of whether the mediation is obtained through the WAMC or privately, or even court-ordered. As with anything related to IP litigation, careful consideration of all factors by qualified counsel is the best way to determine what options are best for any particular dispute.