What options are available to settle intellectual property disputes?
Intellectual Property (2nd edition)
Intellectual property disputes can be settled out of court by means of negotiations between the parties and conclusion of a settlement agreement. It is also possible to enter into a settlement agreement at any stage during the court proceedings. In such a case the settlement is to be confirmed by the court.
Besides the options stated in question 17, disputes may also be settled via mediation using a mediation agreement. Parties may submit the mediation agreement to court to obtain a mediation award. The mediation award is enforceable.
Pursuant to civil proceedings rules, parties willing to settle a dispute in Intellectual Property can:
- enter into a private settlement agreement providing that the parties withdraw their action and waive any claim in relation with the disputed facts (Articles 2044 et sequitur of the French Civil Code (CC));
- initiate a mediation or conciliation procedure involving the assistance of a third party and, optionally, the recognition by the judge of the agreement then reached by the parties (Article 127 et sequitur of the CPC).
In-court conciliation and/or mediation can be requested by the parties or recommended by the judge at any time during the civil proceedings. Out-of-court settlements are also available.
All court cases may be resolved by settlement, as long as the nature of the dispute allows for such settlement. The parties may conclude a settlement agreement either before the court or out of court. If the settlement is concluded before a mediator, the court confirms it, by which the settlement is binding as if concluded before the court. When the parties conclude a settlement before the court, the settlement agreement is recorded in the court protocol. The court may reject a settlement if concluding it would be against the law, circumvent it, or be against the principles of community life.
When the parties settle out of court, they then conclude a settlement agreement without letting the court know of its contents, and the claimant withdraws the statement of claim from the court. After the trial has started, the claimant may only withdraw the statement of claim by also relinquishing the claim. The court may reject the withdrawal if it would be against the law, circumvent it, or be against the principles of community life.
The parties involved in an IP related dispute, may decide to settle their issue by entering into a private settlement agreement through which the parties withdraw their action and waive any claim in relation with the issue at hand. The parties can settle the case at any stage and phase of the proceedings. The settlement could be reached even before (in order to avoid the litigation) or after the decision (in order to avoid or modify the enforcement of the decision). Generally, the settlement is reached through negotiations, including between lawyers.
Alternatively, the parties may settle their issue and opt for a mediation through the service rendered by ADR' entities. In the context of a legal dispute, the judge has also the power to invite the parties to settle the case and can schedule a specific hearing for this purpose.
Negotiations and settlement can be achieved in Cyprus, for example by signing a co-existence agreement in relation to the intellectual property in issue. Other options to settle are mediation and arbitration.
As is well known, litigation is often the most expensive and least effective means of enforcing one’s IP rights. Non-judicial alternatives are usually less expensive and substantially quicker. However, in many cases, it is still necessary to file a claim with the court to induce another party to settle. As noted above, Israeli courts often pressure parties to settle prior to trial, and usually delay the commencement of trial to allow sufficient time for settlement negotiations.
The following alternatives to litigation are available in Israel:
(i) Settlement During ILPO/ILTO Proceedings
Under Israeli Trademarks and Patents laws, parties may settle a dispute during the application process for a patent or trademark.
Israeli courts often recommended arbitration. The decision of the arbitrator is final and binding on the parties. The arbitrator’s decision requires and usually receives court approval, which renders the decision a binding judicial ruling.
Mediation is usually mandated by the court where the parties have expressed a willingness to negotiate and settle. Unlike arbitration, mediation is non-binding and statements and offers made in mediation are not admissible in court.
(iv) Out of Court Settlement
An out-of-court settlement is usually the quickest and least expensive resolution of IP claims. The settlement generally involves agreement on a certain amount of compensation, royalties, cross-license arrangements, etc.
Apart from those already mentioned (civil and criminal courts), it is common for the parties on a contract to agree that any type of dispute or disagreement over it is resolved before some type of arbitration. The most common is the Arbitration and Mediation Center of Santiago.
Out-of-court settlement is possible, even after the introduction of court proceedings. If the agreement is duly submitted to court, it may take the form and obtain the status of a judicial decision.
As from 17 October 2018, there will be compulsory use of mediation (see Q.17 and 21) .
In the case of case of criminal offences prosecuted ex officio, the parties do not have the power of disposal of the dispute. Nevertheless, de facto the court will take into account a settlement agreement.
Claims may be settled at any time, whether before, during or after commencing proceedings. Some claims are even settled during the trial of the case.
Settlement usually requires the consideration of a number of factors, such as: whether the alleged infringer will be licensed and allowed to continue the allegedly infringing activity; whether a royalty or licence fee will be paid; whether there will be any payment in respect of the past activities of the alleged infringer; and whether there will be any payment in respect of legal costs incurred by the parties. Once agreed, the terms of the settlement are usually recorded in a settlement agreement. The settlement could also form part of a broader commercial agreement.
If proceedings have been commenced, the parties will have to dispose of the proceedings by agreeing a court Order. The Order will record that the Claimant has discontinued the proceedings or that the proceedings have been dismissed with the consent of the parties. The settlement agreement itself can remain separate from the court Order, and confidential.
Disputes may be settled through National Centre for Dispute Resolution.
Administrative tutelage actions, lawsuits and intellectual property office proceedings.
Infringement and validity of intellectual property can be challenged in any federal district court while the validity of some intellectual property rights can be challenged at the Patent Trial and Appeal Board or the Trademark Trial and Appeal Board at the United States Patent and Trademark Office.
Parties may settle intellectual property disputes by going to Court or referring their disputes to arbitration.
Other than the alternative dispute resolution mechanism of the IPO and the courts, parties may resort to arbitration which is governed mainly by agreement prior to (e.g. via arbitral clauses) or subsequent (e.g. via agreements to arbitrate) to the dispute.
Parties may settle disputes out of court by entering into a private settlement agreement. Disputes may also be settled during court proceedings by the parties reaching a judicial settlement. When a judicial settlement is stated in a record, such statement has the same effect as a final and binding judgment.
The parties can come to a mutual settlement. The parties could also consider using mediation, such as the Mediation Centre, or the Dubai Chamber's Mediation services, or mediation services through the Abu Dhabi Global Market.
Dubai's first dedicated business mediation centre launched on May 16, 2016.
Arbitration and Mediation.
Mediation and arbitration are the methods that may be used for settling intellectual property disputes in India. Arbitrability in IPR, however is only possible for disputes involving right in rem and not in case of rights in personam. Moreover, out of court negotiations and settlement are also common in India, which include co-existence agreement etc.
Apart from confirmation of settlement during litigation, a settlement can be reached through mediation and negotiations between the parties. A dispute can also be settled through arbitration proceedings (in this regard, see question 17).
To settle intellectual property disputes it is possible to either file an opposition with the Board of Appeal (in case of trade mark registration only) or to file a court claim. The parties, of course, can seek an agreement also by negotiation.
Parties may settle IP disputes by bringing the case to a court, or demanding a State administrative authority in charge of IP under Section 200 of IP Law to handle and impose a fine against the violator, or referring to the Vietnamese arbitrations (eg. VIAC) subject to a prior arbitration clause agreement, or out-of-court settlement or co-existence agreement based on the conciliation and compromise by and between them.
Disputes can be settled out of court, but also in court as part of court proceedings.
Parties may opt for amicable resolutions via negotiations and talks, alternative dispute resolutions such as arbitration, or court proceedings. Arbitration and mediation are options for alternative dispute resolution in Malta, which may result in less costly mechanisms for interested parties.
Disputes can be settled in court and out of court, either by arbitration or mediation. Also, the parties are free to negotiate a dispute resolution agreement during court procedures, as a conciliatory approach is stimulated during proceedings.
The parties can choose to settle at any time until the judgment has been given. It is quite common to settle during court-sponsored mediation prior to the oral hearing in the court of first instance. If prudent, the judge will also remind and encourage the parties to discuss potential settlements during the main hearing.