How to Use WIPO Deal Mediation in Commercial Negotiations
At the start of this year, three FRAND (fair, reasonable and non-discriminatory) patent licensing negotiations, which utilised WIPO Deal Mediation, concluded with the parties settling their dispute and entering into new commercial agreements. Each of the cases concerned the licensing of large telecom patent portfolios between SEP holders and implementers. There were also pending court proceedings in multiple jurisdictions and settlement which meant the parties could resolve their global court litigation.
WIPO Deal Mediation is the use of mediation to facilitate entry into or renewal of commercial agreements. The mediator, a neutral intermediary, is appointed by the parties to help them consider new ways of reaching a negotiated outcome. In a WIPO Deal Mediation, parties can either decide on a mediator of their choice or request the WIPO Center to provide a shortlist of suitable mediators. Following either an exchange of written statements or calls with the mediator briefing the mediator on what has happened so far, a one-day mediation session will usually be arranged. The mediation session can be held online or in-person and can be arranged for more than one day, based on the parties’ preference.
Two areas where the WIPO Center has seen interest in Deal Mediation in particular is in the area of Life Sciences and FRAND patent licensing negotiations.
Jane Player, an experienced WIPO mediator with particular expertise in Life Sciences explains the benefits of Deal Mediation and her experiences:
“Deal Mediation moves the role of the neutral from dispute management to dispute avoidance, crucial for long-term commercial relationships often involving complex IP.
“This type of mediation can take place either at the beginning of a new commercial relationship where parties may fear that perhaps their working cultures are very different and issues might arise in what might often be a commitment to a long-term agreement or where the commercial relationship has started and issues have arisen but the parties prefer not to “press the legal button” as yet.
Deal Mediation establishes a line of communication between parties on both sides with representatives who respect each other so that when issues arise, whether legal, personal or cultural, there is a quick and efficient route to discuss and resolve without interrupting the progress of the project. My role as a neutral is to facilitate open and confidential discussions, hearing fears and concerns on both sides in private sessions. Then I am involved in assisting in confidential discussions between them (often a mixture of online and face-to-face depending on the geographies involved), helping parties find a way through any impasse. As soon as matters resolve and before any dispute has escalated, I disappear until the next time they need me and the project continues. Because I am appointed as an acceptable neutral to all parties before the issues arise and at the beginning of the commercial relationship, it is easy for any of the parties to reach out and trigger this mechanism quickly.
In another case I was brought in after the joint venture was in place but issues were arising on the commercial side that couldn’t easily be articulated through the contract (i.e. there wasn’t a breach as such, just an unacceptable way to approach certain agreed contractual KPI’s). Both parties were aware of Deal Mediation and agreed to my appointment. The mediation was set up to create a safe and confidential environment to discuss all issues concerning the joint venture. Again private meetings took place first to allow parties to air grievances and voice concerns to me, then joint meetings took place where I facilitated a conversation between them, aware of the private issues, so that they could find a way through the issues and secure a compromise and a road map to fulfil the contract in a mutually acceptable way. There the contract required an agreed addendum which the lawyers were able to draft after the mediation had concluded.”
Licensing of standard essential patents on FRAND (fair, reasonable and non-discriminatory) terms has been another area where the WIPO Center has seen creative approaches being taken to dispute resolution. Over 80 mediation cases have now been administered by the WIPO Center, the majority of which have been filed in the last five years. Chung Nian Lam, a WIPO mediator, shared his thoughts on a recent WIPO FRAND Deal Mediation in which he was appointed as mediator:
“The mediation process established a safe and respectful communication channel for each of the parties to communicate their core concerns and interests on a without prejudice basis. Further, private caucus sessions allowed for each party to share their views more freely, and for me to explore options and solutions for advancing the negotiations with each party.
The mediator as a neutral party can also help to facilitate communication between the parties on issues that are very critical to their decision making, particularly in situations where sharing information directly between them may be challenging, for example, on account of confidentiality concerns.”
The WIPO Center has been active in Life Sciences and FRAND disputes for a number of years, providing parties with an alternative to court litigation. The WIPO Center’s Life Sciences ADR webpage and FRAND ADR webpage provides further information on the WIPO Center’s case experience and how WIPO ADR may be used to facilitate dispute settlement.
The WIPO Center welcomes any queries regarding its ADR services and may be contacted at [email protected].
