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The option of mediation in intellectual property row



Personal Finance

Mediation is a form of ADR that is increasingly being used to resolve disputes. FILE PHOTO | NMG 

Enforcement of intellectual property rights (IPS) is an important aspect for holders to attain maximum gain out of the ownership.

One cannot file a dispute unless they hold a valid IPR. For example, one cannot purport to file a trademark infringement case against a third party if they have not had the trademark registered.

Many global corporate giants have an active intellectual property litigation strategy to enable the corporate attain and maintain a competitive edge. This means that the corporate will litigate against third parties when the subject involves their IPRs. In so doing, these corporates are able to defend their market position globally.

I would want to highlight alternative dispute resolution ( ADR) as a part of the dispute resolution mechanisms that IPR holders can pursue. ADR includes arbitration and mediation as some of the tools of dispute-resolution. The use of ADR has been encouraged and I would like to highlight its possible usage in resolving IP related disputes.

Mediation is a form of ADR that is increasingly being used to resolve disputes. Only recently in Kenya has mediation been formally embraced as part of the dispute- resolution process where applicable. There are some cases that had initially been filed in court, but qualifying cases are referred by the Judiciary to a mediator for partial or whole settlement of some aspects. Mediation is advantageous as a dispute resolution mechanism for several reasons. First being that in some cases it is faster and cheaper than the court process. A good mediator would be able to pick up the issues from the parties very fast and would help the parties resolve those issues.

It is interesting to note that not all issues are related to the subject matter. One may be surprised to find out during the mediation process, that the issue was relational.

Mediation is also preferred as it is conciliatory where one of the key goals for the parties is attaining a win-win settlement thereby preserving the relationship. Mediation is therefore ideal where there is a relationship that parties desire to preserve for example family or business relationships.

The modern organisation is beginning to appreciate the need for mediation and many of such organisations are increasingly including mediation as part of internal and external dispute resolution, for example with employees and third parties such as suppliers.

When it comes to intellectual property dispute resolution therefore, mediation is advisable where the parties have a relationship to maintain and for a win-win settlement. Such example is where the IPR is jointly acquired or the subject matter of the IPR is to be jointly implemented. Mediation can be introduced into some IP- related contracts such as joint ventures, employment contracts licensing, computer contracts and technology transfer agreements.

There are professionally trained mediators who would be able to handle IPR disputes. However I would recommend the inclusion of World Intellectual Property Organisation (WIPO) mediation clauses into some IP related contracts. WIPO Mediation is a mechanism that is able to handle both domestic and cross border disputes. A mediator would be appointed to conduct the dispute till finalisation. The WIPO Mediation Rules would guide such a process and the mediators are selected from a panel known as the WIPO Neutrals.

I believe that inclusion of the WIPO Mediation process as part of dispute resolution is further beneficial to parties as the mediators have skills in mediation and intellectual property rights.

Mediation is however not advisable if the IPR dispute requires harsher penalties.