INTERNATIONAL MEDIATION- CASE STUDIES
Ramasubramanian FCIArb
Arbitrator / Counsel | Expert Witness | Advocate| Mediator | Member IBA | ODR Neutral | PoSH ICC| WIPO Neutral | Co-Author - Handbook on ARBITRATION by ICSI.
PATENT MEDIATIONS
A European university holding pharmaceutical patent applications in several countries negotiated a license option agreement with a European pharmaceutical company. The pharmaceutical company exercised the option and the parties started to negotiate a license agreement. After three years of negotiations the parties were unable to agree on the terms of the license. At that point the parties submitted a joint request for WIPO mediation.
The one-day meeting session allowed the parties to identify the issues and deepen their understanding of the legal circumstances. On this basis, the parties continued direct negotiations amongst themselves and reached a settlement agreement.
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A WIPO Mediation of a Dispute in the Automotive Industry
A US based manufacturer of automotive components concluded a settlement agreement in the form of a patent license with one of its European competitors. This agreement contained a dispute resolution clause referring to WIPO Mediation to be followed, in the absence of settlement, by WIPO Arbitration with a three-member tribunal.
Two years after the conclusion of the settlement agreement, the US company submitted a request for mediation alleging infringement of its US patents and claiming royalty payments for the licensed automotive parts technology. The request specified the preferred qualifications of the appropriate mediator and the WIPO Center provided to the parties a list of candidates with specific expertise in patents and the relevant technology.
The parties selected one of the recommended mediators who convened a two-day meeting. The meeting involved various caucus sessions and the parties engaged in a continuous exchange of proposals and discussions. Such negotiations related to the amount of royalty payments sought by the US company and the renegotiation of the terms of the license relating to royalty payments.
At the end of the hearing the parties agreed on a term sheet laying down the terms of a final agreement, which enabled the parties to efficiently continue their business activities in this market.
TRADEMARK MEDIATIONS
After a dispute arose between them, a North American company requested mediation with two Italian companies and one Spanish company on the basis of an agreement which the parties had reached for mediation under the WIPO Mediation Rules. The goal of the mediation was to help the parties avoid confusion and misappropriation of their similar trademarks and to regulate future use of their marks. Although Italian was agreed as the language of proceedings, any settlement agreement would be recorded in both Italian and English.
The WIPO Center suggested to the parties potential mediators with specific expertise in European trademark law and fluency in Italian and English. The parties selected an Italian mediator with a trademark practice. The mediator conducted an initial telephone conference with the lawyers of the parties in which he scheduled the mediation timing, and agreed on the procedure.
领英推荐
Two months later, the mediator met with the parties in a two-day session in Milan. The meeting was held in joint session with the exception of two brief caucuses. At the end of the second day the parties - with the assistance of the mediator - were able to draft and sign a settlement agreement covering all of the pending issues in dispute.
IT MEDIATIONS
A European airline entered into an agreement with a US software company concerning the development of a worldwide platform for the management of ticket sales. This was followed by a professional services agreement, which contained a more detailed description of the project as well as the support services to be delivered by the software company. The latter agreement included a WIPO mediation followed by WIPO expedited arbitration clause.
The airline paid several million USD for the application. Some years later, the airline terminated the agreement. In response, the software company asserted that, with the termination, the airline’s rights in the application had lapsed and requested the software to be returned. The airline was of the position that it was entitled to retain the software application and initiated mediation. The result of the mediation was a new license between the parties.
COMMERCIAL MEDIATIONS
Two companies involved in medical supplies entered supply and license agreements to market pharmaceutical products in some European countries. A dispute arose between the parties concerning the termination of the agreements due to an alleged material breach of contract by one of the parties. The agreements contained a dispute resolution clause referring the dispute to WIPO Mediation followed by court litigation in the absence of a settlement. Accordingly, the parties jointly requested the WIPO Center to appoint a mediator with demonstrated experience in commercial agreements within the field of medical supplies.
The preparatory conference facilitated by WIPO was conducted online, followed by an in-person mediation meeting. During the mediation meeting, the parties identified several mutual grounds for settlement. They agreed to modify the existing supply and license agreements instead of terminating them, subject to the parties' implementation of some binding terms included in the settlement term sheet concluded during the in-person meeting. After four months of direct negotiations between the parties, they re-approached the mediator and the WIPO Center to resume mediation and finally concluded a settlement agreement.