How to plan successful IP mediation

Mediation is an increasingly attractive option to resolve IP disputes, especially for SMEs, individuals and universities. But it is important that organisations are well prepared and proactive, says Cyrille Rousseau of Dennemeyer & Associates.

Mediation offers several significant benefits to parties with IP quarrels. It is often quicker and cheaper than litigation, is confidential, can resolve related conflicts across multiple jurisdictions and can lead to commercially focused solutions (which may not be available from the courts).

When all parties engage in good faith, moderated talks can lead to a win-win situation, where old disagreements are settled and future business opportunities created. In the past few years, new conciliation opportunities have arisen, particularly within the European Union.

For example, the EU Intellectual Property Office (EUIPO) launched its Mediation Centre in November 2023, with services expanded in June 2025 to cover all inter partes proceedings relating to EU trademarks and registered EU designs.

In June 2026, the Patent Mediation and Arbitration Centre of the Unified Patent Court will be inaugurated, providing a new forum for alternative dispute resolution (ADR) in Europe.

Working out differences

Simply put, mediation is a process whereby a neutral, expert mediator assists parties to reach an agreement. This kind of ADR can be mandated in an agreement between business partners or can be proposed by one or both parties when contention arises.

Unlike court proceedings, this peacemaking takes place behind closed doors, and it is generally less adversarial. In an IP context, formalised discussion can be used for everything ranging from friction with employees, suppliers or contractors to complex cases involving the validity and infringement of rights.

As they are not constrained by court procedures, intercessors may be able to address multiple issues in different jurisdictions and propose creative commercial solutions that are designed to benefit both sides.

While the discussions themselves may last as little as a few hours or as long as several weeks, the whole process may take many months. It is essential, therefore, to be well prepared to ensure you can reap the benefits of sitting around the table.

Know your goals

The first priority for any organisation is to identify and articulate the desired outcome of conciliation. These goals could be legal, industrial or both, but it is critical that they are agreed and understood internally.

However, it is also necessary to remember that mediation can deliver novel solutions. Thus, when establishing the objectives, it may be helpful to divide them into non-negotiables on one hand and issues on which some compromise can be made on the other.

It may also be beneficial to reflect on what the other side’s aims are and what impact these might have on your own strategy. Example: An established business, “BigCo”, discovers that a new company, “StartUp2.0”, has recently launched a product that infringes its IP rights.

While Startup2.0 does not have much market penetration yet, it could roll out products quickly, and its fortunes could embolden other competitors. BigCo does not want to be seen as a bully and would prefer to avoid the publicity of litigation.

If StartUp2.0 recognises the validity of the prior rights and agrees not to infringe them, BigCo may agree to grant an IP licence in return for royalty payments. Seeking damages for past infringement is desirable but not a priority.

Define responsibilities

As soon as mediation is put forward, it becomes appropriate to determine who would be involved— both internally and externally.

This may require some discussion, especially for larger companies: internal representatives should have authority to make decisions, but they must also have knowledge of the dispute’s history and be able to devote sufficient time to proceedings.

External representatives may include lawyers with various specialisms and/or patent attorneys, as well as independent experts. Factors of team size and composition are more deterministic than their obviousness would suggest, as the knowledge base must encompass all the topics at hand without introducing a headcount that is too big for efficiency and cost reasons.

Talks can move fast, and negotiators can only respond quickly to proposals if they have a proper grasp of the nature of the relevant products and technology, the commercial objectives and the range of acceptable conclusions. It is crucial, then, that the participants are fully briefed at the outset.

Example: A fast-growing hightech company, “TechBoom”, has an agreement to license certain IP rights in software from an individual developer, “Iris Inventor”.

However, Iris has complained that TechBoom’s latest developments are not covered by the licence and infringe her rights. The agreement includes a mediation clause.

When preparing, TechBoom chooses a team comprising a director who understands the business aims, an executive who was involved in the early stages of the collaboration and the in-house IP attorney. It appoints an external counsel known for taking a conciliatory, innovative approach rather than its usual litigation specialist.

Select evidence and other materials

Careful thought should be given to compiling and presenting evidence for use. Unlike in litigation, parties have wide scope regarding what documents they introduce, and these should be chosen conscientiously since you want to put forward your strongest arguments without jeopardising the efficiency of the process.

A “less-is-more” methodology may be most effective in negotiation, but it is critical not to overlook anything that might be relevant to a favourable result.

Key papers may include contracts, licences and agreements between the parties, as well as comparables with other parties, financial data and historical records demonstrating the acquisition, assignment or licensing of IP rights.

When deciding which records to share, attention should be paid to confidentiality. While anything disclosed in the process is kept between the parties and the mediator, there may be items that are particularly sensitive, where extra precautions are necessary.

Example: A research institute, “Geek Labs”, has an extensive patent portfolio and has agreed licences with many manufacturers. It is in mediation with a manufacturer, “Top Products”, to finalise licensing terms.

As well as evidence of its patent rights and research publications, Geek Labs has extensive confidential information and market-sensitive agreements with other manufacturers. Geek Labs asks its lawyers for advice on whether it can disclose this information only to the mediator, Top Products’ external advisers and/or certain named individuals at Top Products.

Keep control

While mediation will likely be cheaper than litigation, it is nevertheless important to plan a budget and allocate resources fittingly.

Costs include the fees to pay for the mediator, venue and external advisers, as well as business outlays, such as management time, travel expenses, potential delays in booking revenues and other disruptions pending the closure of procedures.

By setting priorities, assembling strong teams, preparing documents and planning budgets, parties give themselves the best chance of a welcome conclusion to mediation.

As ADR looks set to become more common in a range of conflicts involving intellectual assets, these are steps that all IP-intensive businesses should bear in mind as a course of action or a flexible pragmatism where quarrels or unexpected opportunities arise.

Takeaways

• Novel solutions may arise
• Identifying goals is crucial
• Team composition needs care

Cyrille Rousseau is a European patent attorney at Dennemeyer & Associates, advising companies in the computer science and transportation sectors. He can be contacted at crousseau@dennemeyer-law.com