One of the many intellectual property disputes settled through mediation at the World Intellectual Property Organisation’s (WIPO) Mediation Center shows how a dinner by the mediator with the parties, restored communication between the parties.
It is one of the recent cases that have been prepared and published while respecting the confidentiality of WIPO proceedings and the identity of parties.
In this case, a major European research institute and a French company entered into a license agreement.
The agreement related to technology in the area of building materials with an application for a patent filed with the European Patent Office.
The parties included in their contract a multi-tier dispute resolution clause providing for WIPO mediation, followed by court litigation.
Three years after the conclusion of the agreement the company alleged the invalidity of the license agreement and requested a refund of royalty payments in light of the rejection of the patent application by the European Patent Office.
The research institute commenced mediation proceedings requesting payment of the royalty rates.
The parties invited the WIPO Center to provide them with a list of mediator candidates experienced in mediation, drafting licensing agreements, and specializing in patent law.
One of those mediators was selected by the parties. The mediator conducted a preparatory telephone conference with the parties including an explanation of mediation principles, the submission of documents, and details of the mediation meeting, such as the timetable, venue, and party representation.
Following a dinner that proved helpful in restoring communication between the parties, a one-day mediation session took place in Munich, Germany.
At the end of the mediation session, the parties were able to conclude a settlement agreement. This settlement agreement included options for the amendment of the license agreement and payment of royalty rates, based on future decisions on the patent application, and the additional opportunity to conclude a research and development agreement between the parties.
