RIO DE JANEIRO (October 14, 2015) – “We know from 35 years’ experience that mediation can be a useful tool in resolving complex, high-stakes IP litigation. When parties enter the process committed to finding a resolution, eight or nine times out of ten, they will, even if they start off tens of millions to literally billions of dollars apart, and often in as little as a single day,” says panel moderator Tony Piazza, a mediator at San Francisco-based Mediated Negotiations. 

But is this tool still effective if the initiation of the process is not voluntary or if it is at the behest of a court or more broadly mandated through legislation? A panel discussion at the AIPPI World Congress here addressed the issue of mandatory mediation. 

Manoel J Pereira dos Santos, a partner at Santos & Borges Barbosa in both Rio de Janeiro and São Paulo, told the audience that while court-ordered mediation might, at first glance, appear to be a coercive method imposed on the parties to the action, there are different ways of reducing the coerciveness of the mediation. 

“There is a lot of talk today about this because the new civil procedure code contemplates a mandatory mediation session in the beginning of the process,” he said. “If what is mandatory is to attend a mediation session, and not to actively participate in the session, you reduce the coerciveness of this process [and the parties are able to maintain their autonomy]. They are required to attend a session. They are not required to stay there [or to] participate.”

That means, he says, that mandatory mediation is an opportunity for the parties to communicate, and to discuss an issue. 

Santos acknowledges that in IP cases, mediation might not be the best solution, especially if what’s really needed is a precedent more than a settlement. “Mediation plays an important role if the idea is to keep a relationship, and that is an area in IP cases which is very important,” he said, noting the many contractual relationships in IP, such as the licensee-licensor relationship.

“Seven or eight years ago, I became convinced that having mandatory mediation does not hurt at all, and it’s not at odds with the voluntary nature of mediation,” said Mladen Vukmir, partner at Vukmir & Associates in Zagreb, Croatia. “When you have mandatory mediation, no one mandates you to settle. They mandate you to sit together. I think this is such an important, overriding social objective that I am not surprised that most legislators are coming to the same conclusion.”

When you have mandatory mediation, Vukmir said, the competence of the mediator is of utmost importance. “If a mediator who is not trained properly is faced with parties who are unwilling to start opening up, there is going to be less likely success than when the case came with the idea to work on the resolution of their dispute,” he said.

“Mandatory mediation is important, particularly where it is true, [such as in] Brazil, where we have an overload of cases in court, so we have to do something to get rid of those cases,” Santos said.

To increase the likelihood that your mediation will be successful, says Piazza, you need to have the decision-makers at the table. “The number one reason for failed mediations is not having at the table the persons who really have the final say in settlement,” he said. 

“You have a unique opportunity in a mandated mediation,” he said. “You can, if you have the will to do it, get the court to order the parties to have their final decision-maker there. There is nothing that would be more conducive to a successful result in any mediation, mandated or otherwise, than to have that happen.”

Piazza also says that advocacy is every bit as important in mediation as it is in litigation or arbitration. “Without advocacy, without a real evaluation of the issues, in a complex IP dispute, you’re reducing mediation to merely carrying water between the parties in terms of offers and demands. It does not need to be that way,” he said. “Your advocacy is critical, but for your advocacy to effectively translate into suasion to the other side, you need a mediator who is going to understand the issues in a complex IP dispute. Choose someone who has the experience to really come to grips with the issues and communicate on those issues effectively to each side.”