By J. Jack Andrade, TSC - Data

A mediator can play a crucial role in resolving patent ownership disputes between a company and an employee.

There needs to be a clarification of what services a mediator does and does not provide.

Facilitating Communication

A mediator serves as a neutral third party who can facilitate open and constructive communication between the company and the employee. This is particularly valuable when emotions are high and direct communication has broken down. The mediator can:

● Create a safe and confidential environment for both parties to express their concerns and interests
● Ensure that each side has an opportunity to be heard without interruption
● Help clarify misunderstandings and miscommunications that may have contributed to the dispute

Exploring Interests and Options

Mediators are trained to look beyond the stated positions of the parties and uncover their underlying interests. In a patent ownership dispute, they can:

Providing a Structured Process

The mediator brings structure to the negotiation process, which can be particularly helpful in complex patent disputes. They can:

Offering a Broader Perspective

Patent ownership disputes often involve technical and legal complexities. In 2024, software application creation can be an emotional issue when the potential financial stakes can be high. Also, artificial intelligence is increasingly being used without the knowledge or consideration of prior ownership.

Inside a company, a skilled mediator can:

● Help the parties consider the broader business implications of the dispute
● Encourage parties to look beyond the narrow legal issues to find mutually beneficial solutions

● Assist in developing forward-looking agreements that address future collaborations or inventions

Externally, when disputes occur between private individuals, smaller companies and/or multinational corporations, the complexity can be exponential. Some considerations may prevent mediation from being viable and may require local legal representation within certain countries:

● Poorly created contracts, and/or translations of same, can lead to costly misunderstandings
● Before creating contracts in specific markets and countries, a party should research legal precedent(s) on
jurisdiction, standing, and judicial prejudice to protect their intellectual properties
● Before establishing intellectual property ownership, patent applications, and contracts, experienced, valid, and local legal expertise should be researched and employed if there are multinational considerations
● The power imbalance between multinational parties, and jurisdiction(s), may prevent any legal agreement to engage in mediation

Maintaining Confidentiality

Unlike litigation, mediation offers a confidential process, which is often crucial in patent disputes. The mediator ensures that:

● Discussions remain private and cannot be used in future legal proceedings
● Sensitive technical information and trade secrets are protected

Facilitating Creative Solutions

One of the key advantages of mediation is the flexibility it offers in crafting solutions. A mediator can help parties:

● Explore non-traditional resolutions that may not be available through litigation, such as joint ownership,
licensing agreements, or royalty arrangements
● Consider options that address both parties' future interests, potentially preserving working relationships

Providing Reality Checks

An experienced mediator can offer valuable insights into the potential outcomes of litigation, helping both parties:

● Assess the strengths and weaknesses of their positions
● Understand the costs, risks, and time involved in pursuing litigation
● Make informed decisions about settlement options

Drafting Agreements

If a resolution is reached, the mediator can assist in:

● Documenting the key points of agreement
● Ensuring that the settlement terms are clear and enforceable
● Facilitating the involvement of attorneys to finalize the agreement

By leveraging these skills and techniques, a mediator can significantly increase the chances of reaching a mutually satisfactory resolution to a patent ownership dispute between a company and an employee, often more quickly and cost-effectively than through litigation.  

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Sources and more information:

The use of mediation in settling patent disputes - HOFFMANN EITLE

The Benefits of Mediation and Arbitration for Dispute Resolution intellectual property Disputes

Patent Mediation Guide - GovInfo