What is mediation?
- What are your mediation services? And how are procedures for mediation conducted?
- Our mediation services are provided to assist the parties in a dispute settle the dispute through the mediators, who have no interest in the parties and act from a fair and neutral position.
Mediation is not system in which the mediators judge a case and resolve the dispute. The parties are expected to make efforts to compromise with each other and settle the dispute by referring to the opinions of the mediators, who are intellectual property experts.
The mediators can express their opinions from the standpoint of experts but do not judge which party is right, and the parties will not be bound by the opinions the mediators have expressed. In most cases, the mediators will offer a proposal to settle the dispute to the parties after listening to both sides, but it is at the discretion of the parties to accept the proposal.
If the parties are unable to settle the dispute no matter hard they have tried, arbitration or a suit will be used to resolve the dispute.
Possibility of predicting the mediation result
- Unlike cases involving a suit in which the decision is published, the result of mediation is not published, so we are unable to predict the result. If we cannot predict the mediation result, we are unable to decide whether or not to apply for mediation. How can we predict the mediation result?
- Mediation is not a procedure for deciding which of the parties will win but a procedure for finding the best solution that satisfies both of the parties through cooperation between the parties involved in a conflict and with the assistance of the mediators. Therefore, the idea of predicting who will win in the mediation is not acceptable. If the mediation proposal given by the mediators is an unexpected one for the parties, the parties can refuse to follow the proposal and still have a suit as a means of dispute resolution. Thus, you do not have to worry about what to do if the mediation result is disadvantageous to you, and you will not need to predict the mediation result. But it will be better for you to consider in advance whether or not mediation will succeed, and there are many cases in which a dispute that could not be resolved through negotiation between the parties was settled through mediation assisted by fair and neutral mediators.
Types of cases for which you can apply for mediation
- We want to apply for mediation. Are there any limitations on the cases for which we can apply?
- You can apply for mediation at the Center for cases involving intellectual property rights, such as disputes about industrial property rights (patent rights, utility model rights, design rights, trademark rights), disputes about copyrights and disputes regarding the Unfair Competition Prevention Law, domain name-related disputes and disputes on trade secrets, knowledge, seed and seedling breeders' rights and disputes on rights to circuit placement in accordance with the Law concerning the Circuit Placement of Semi-conductor Integrated Circuits.
The Center accepts applications for mediation for the resolution of intellectual property right-related disputes, including infringement of intellectual property rights, the determination of the amount of damages in a case in which there exists an infringement of rights, unfair competition acts relating to these rights and the violation of a contract or delinquency regarding these rights.
Effects of mediation
- What are the effects of the agreement on settlement signed as a result of the mediation?
- If an agreement on settlement is signed as a result of mediation, the contract has the same effects as a general contract. If there arises any problem about the exercise of the rights in the contract, you can secure the exercise of such rights by making the contact a notarial deed, making it an arbitrators' decision, etc. But, in most cases, when a settlement has been reached between the parties, the agreement on settlement is concluded at the discretion of the parties.
Number of applications
- How is the scope of mediation determined when applying for one case? For example, if we have two or more patents for our license negotiation, can we apply for mediation for these patents as one case?
- The Center has no established rule for the scope of one application for one case of mediation. The Center will determine whether or not the application should be handled as one application for mediation according to whether or not the application is suitable for processing by the procedures for one mediation.
In a case in which a license agreement covers two or more patents, or in which two or more patents are involved in a product, you can apply for mediation considering it as a single dispute (one case).
If you apply for mediation for a dispute about infringement of a product involving two or more patents, your application is also handled as one mediation case in principle.
In addition, in a case in which you apply for mediation appointing the manufacturer making the product and the dealer handling the product as respondents, the Center can deal with your application as one application for mediation in most cases.
The scope of the application for mediation can differ on a case-by-case basis. If you have any questions, please feel free to contact the Center.
Cases with two or more respondents
- Can we apply for mediation for cases with two or more respondents as one case, and will the fee be for one case?
- In a case suited for examination by mediation procedures for one case, even though there are two or more opposite parties (for example, a case in which the point in dispute is the same), such as a case in which you want to settle a dispute about a certain patent infringement against a manufacturer and its affiliated dealers, you can apply for mediation as one case and for the fee will be for one case.
In a case in which you have two or more opposite parties, which have a specific relationship with each other, if each of the opposite parties wants to resolve the dispute with you independently, you can apply for separate mediation for each of your opposite parties. In this case, you will need to pay a separate fee for the mediation with each of your opposite parties. If your opposite parties have no specific relationship with each other, you will need to apply, in principle, for separate mediation with each of them and thus need to pay separate mediation fees for each.
In almost all cases in which you have only one infringing party, you can request dispute resolution by filing one application for mediation even when you have two or more products or two or more rights for which infringement is being claimed.
When there are so many products and rights for which infringement is being claimed that the Center needs a great deal of time and work for its examination, the Center may ask you to pay the equivalent fee for multiple cases.
Because this can differ on a case-by-case basis, please contact the Center if you have any questions.
Demand for an injunction or compensation for damages
- It seems that a patented invention owned by our company was used for a product manufactured and sold by Company A. We want the company to stop the manufacture and sale of the product and to pay us compensation for the damages we have suffered. Can we apply for mediation for settling this type of dispute?
- Yes, you can apply for mediation to settle an infringement dispute on patent rights for a case such as this. When an application for mediation is filed for such an event and the other party accepts resolution by mediation procedures, the Center will begin the procedures for mediation, and its mediators will examine whether or not the product in question falls under the technical scope of the patented invention and attempt to have the parties sign an agreement on settlement. You can also apply for mediation for a dispute on infringement on design rights, trademark rights, copyrights, etc.
Cases in which the applicant wants to resolve a dispute about a patent but wants to prevent damaging the friendly relationship with the opposite party
- We are doing business with Company A but it seems that Company A has infringed on our patent rights. We do not want to damage our friendly relationship with Company A and would like to avoid filing a suit against them as much as possible. But we cannot let them continue their actions.
In this case, can we settle the problem amicably by applying for mediation? - Yes, you can. A case of this type is a typical dispute that is suitable for dispute resolution through mediation. Mediation can settle such a dispute by avoiding uncompromising controversies and through amicable discussions between the parties. Therefore, it can resolve a dispute without impairing the friendly relationship between the parties.
In addition, even if your company and Company A did not already have a friendly relationship, mediation will enable you to build a good relationship with Company A for the future by reaching an amicable resolution to your present patent dispute with that company. If you want to enter a field in which Company A possesses proprietary technology, an amicable resolution now may be advantageous for conducting license negotiations with them in the future. By utilizing mediation effectively and taking your strategies for the future into consideration, you will be able to achieve further growth of your business. If you file a suit against Company A, your relationship with them will likely become worse.
Resolution of a dispute about a patent that has grounds for invalidation but for which it is not easy to prove that the patent has such grounds for invalidation
- From Company A we have received a warning that our Product X infringes on their patent rights. Because we started to manufacture and sell Product X prior to Company A's application for the patent, we think that we have prior user rights and their patent is invalid. But we have not found any suitable data showing the date when we began the manufacture and sale of Product X and are not confident that if we file a suit against Company A, we will be able to show effectively that we have prior user rights and their patent is invalid. In this case, can we settle the dispute by mediation?
- Mediation is not a procedure for determining who is right but a procedure for assisting the parties to resolve a dispute through mutual discussions if they consent. Therefore, you will be able to settle your dispute in this case.
Resolution of a dispute on a patent for which there is an argument about grounds for invalidation
- It is evident that Company A has infringed on our company's patent rights and we warned them about their infringement. But they argued that we had been able to make the patented invention easily on the basis of "Data X". We think that Company A's argument has no grounds, but from a different viewpoint, there may be a possibility that Company A's argument could be accepted.
Therefore, we hesitate to file a suit against Company A. In this case, can we resolve the dispute properly by mediation? - In mediation, mediators will express their opinions on the validity of a patent from the standpoint of fair experts in intellectual property and encourage the parties to decide based on their own opinions and settle the dispute. If your opinion and the opinion of your opposite party differ as to whether or not Data X enabled you to create your patented invention easily, instead of arguing about the validity of the patent, it may be possible for you to resolve the dispute by paying an amount upon which both you and your opposite party agree. If you resort to a suit, you will have to enter a dispute with your opponent about the validity of the patent and take it to the very end, at which one of the parties will be defeated totally. But mediation will enable you to avoid such a situation and reach a win-win resolution.
Amount of the license fee
- We negotiated with the respondent about the amount of damages to be paid for an infringement on our patent rights but failed to reach any agreement about the amount of compensation for past damages and the license fee for the future. We want to have an objective and reasonable amount of compensation for damages determined. Can we apply for mediation in this case?
- Yes, you can. Mediators are experts in intellectual property and will propose an objective and appropriate amount of compensation for damages considering the nature, technical field, etc., of the invention and the situation of the parties. It is at the discretion of the parties to accept the proposed amount.
Share of jointly owned patent rights
- With the cooperation of another company, we succeeded in creating an invention and applied for and acquired patent rights to the invention. But we have a dispute with that other company about the ratio of the shared patent rights. Can we resolve this problem by mediation in this case?
- Yes, you can. Mediators will listen to both of the parties and offer a reasonable proposal for settlement in consideration of, among other facts, the contribution of each party to the invention.
Non-fulfillment of a contract
- We are two parties who made a joint application and acquired design rights and signed an agreement on the manufacture and sale of products relating to the design rights. But our counterpart has failed to fulfill our agreement. Can this case be settled by mediation?
- Mediation cannot cause the respondent to fulfill an agreement unilaterally. But mediators will listen to both of the parties, determine which of the parties has failed to fulfill the agreement and express their opinions to both of the parties in an attempt to encourage them to reach a settlement. Unlike cases involving a suit, an agreement on settlement has no legal force. But if both of the parties accept the mediators' opinions, there will be a high possibility that the agreement will be fulfilled independently.
Time for an application for mediation
- We thought that a product manufactured and sold by Company B infringed on our patent rights, and thus sent a warning to Company B requesting them to stop the manufacture and sale of the product. But we have received no answer from Company B. In this case, can we apply for mediation immediately, making Company B a respondent, without any prior discussion with Company B?
- Yes, you can. The procedures for mediation will not be started unless the respondent accepts, but the Center's case manager will strive to encourage the respondent to be present at the mediation. If, as a result, the respondent agrees to participate in the mediation, talks between the parties are held and an agreement on settlement is signed, you will be able to resolve the dispute at lower cost, quicker and more easily than by filing a suit. Unlike a suit, in mediation procedures, no strict arguments or evidence according to legal procedures are required in principle. Mediators will listen to the arguments and evidence of the parties carefully and strive to make a reasonable judgment and offer a proposal for settlement acceptable to both of the parties. If an agreement on settlement is signed, the agreement will be concluded independently in most cases because it is an agreement acceptable to both of the parties.
Reasonable consideration for an employee's invention
- I am an employee who created an invention with patent rights. I want to demand reasonable consideration for this invention from the company. Can I apply for mediation in this case?
- You should discuss this with your company first, and if you are unable to settle the problem through your discussions, you can apply for mediation. If your company agrees with your application for mediation, the mediation procedures will be started. In the mediation, the mediators will offer you an amount of reasonable consideration. If both you and your company agree on the amount proposed, you can sign an agreement on settlement.
Non-disclosure of the mediation procedures
- We have a dispute with a company about intellectual property, but because we do not want any third parties to know about this dispute, we want to settle the dispute in secret. If we resort to mediation, can we resolve the dispute without any third parties knowing about it?
- One characteristic of mediation that is different from a trial is that the procedures for mediation are not open to the public. The Center makes it a rule not to publish any details of the mediation, and the mediators, assistant mediators, case managers, steering committee members and secretariat personnel are bound by confidentiality. Therefore, if you use our mediation services, you can resolve a dispute without any third party knowing about it.
Whether or not mediation procedures are possible without the presence of the respondent
- We want to apply for mediation but do not want to discuss it in the presence of our counterpart because of confidential information problems. Can we ask the mediators to listen to us without the presence of our counterpart?
- In mediation, it is possible, at the discretion of the mediators, to listen to each of the parties separately on the date of the mediation hearing. If you have any evidence you do not want to disclose to the other party, you may ask the mediators prior to the presentation of such evidence to keep the specific part of the evidence confidential from the other party.
Whether or not an applicant can apply alone
- When I apply for mediation, will the respondent be sure to accept the mediation request?
- Unlike cases involving a suit, the respondent cannot be forced to participate in mediation. But the Center will advise the respondent to sit down to negotiate and cooperate to settle the dispute independently.
Action to be taken when the other party has applied for mediation
- If the other party has applied for mediation against us, is it better for us to accept the application? If we do not agree to participate in the mediation, could we be at a disadvantage in a trial in the future?
- In general, the fact that you did not accept a request for mediation in the past will have no adverse effect on you in a future trial. But a trial makes it clear which side is right, and thus there is a possibility that as a result of any unexpected evidence presented, a decision unlike your expectations might handed down, causing you to regret that you did not agree to participate in mediation at that time.
The other party's application for mediation against you means that they have indicated an intent to resolve the dispute through discussions with you. Therefore, we advise you to accept the application for mediation unless you have any special reason for refusing it. If after you have agreed to mediation, you find that there is no room to reach an agreement, then you can always withdraw from the mediation.
Locations for submitting applications
- Do you have any other locations for submitting applications for mediation than Tokyo, Nagoya and Osaka?
- Besides our Tokyo Headquarters, Osaka Branch and Nagoya Branch, the Center also has subbranches in Sapporo, Sendai, Hiroshima, Takamatsu and Fukuoka. Your application will be accepted at any of these locations.
Appointment of mediators
- How are mediators appointed?
- The Center appoints two mediators for each case from a list of mediator candidates. If the parties agree, the Center may appoint three mediators. In addition, after the mediation procedures have begun, an additional mediator may be appointed with the agreement of the parties.
Impartiality of mediators
- How is the impartiality of mediators guaranteed?
- When appointing its mediators, the Center checks whether or not the candidates for mediators have any particular interest in the parties, and appoints only candidates who have been confirmed to have no interest.
In addition, the parties may raise an objection to the appointment of mediators within 14 days after receiving a notice of their appointment. Even after mediation has begun, if either of the parties think that it will be impossible to maintain impartiality in the mediation, they may notify the Center of their opinion and have any mediator replaced.
Specialties of the mediators
- We want to have patent attorneys or attorneys-at-law serve as the mediators for us. Can you tell us the specialties of the appointed mediators?
- The Center has prepared and published a list of candidates for mediators, arbitrators and panelists, and the specialties of some of the candidates are provided in the list. We aim to show the specialties of almost all of the candidates in the list. We can deal with all the fields related to intellectual property rights.
Locations for the mediation procedures
- Where are the mediation procedures conducted?
- Mediation procedures are conducted at the Japan Patent Attorneys Associations Building (Benrishi Kaikan), Bar Associations Building (Bengoshi Kaikan), the Center's Nagoya Branch, Kansai Branch and subbranches and other locations designated by the Center or its mediators. If the parties have any other location that is more convenient for them considering their address or other circumstances please indicate the location preferences to the mediators. If both of the parties agree, telephone conferences and video conferences may also be used.
Period of time required for settlement
- How much time will be required for the settlement of a dispute?
- The time needed for settlement can differ according to the degree of cooperation of the parties and the nature of the case, but the number of days spent for settlement by mediation so far is 176 days on average (median: 162 days), and the minimum number of days needed is 65 days. If the parties seek a prompt settlement of a dispute, as much as possible, we will try to use our time for the mediation of the dispute and reduce the intervals of hearings. In an effort to hold the first hearing as soon as possible after an application for mediation has been filed, the Center makes a flow chart of the period from the application filing date to the holding of the first hearing, and strives to conduct the procedures according to that flow chart. We also aim at completing our mediation within three hearings and within six months from the first hearing.
Number of mediation hearings
- How many hearings for mediation be held?
- The number of hearings differs according to the nature of the case, but typically we need about three hearings before a dispute is settled. In cases settled through the Center's mediation services in the past, the number of hearings was four on average (median: four days), and the minimum number of hearings was two.
Costs of applications for mediation
- What kind of costs are involved in an application for mediation?
- When filing an application for mediation, the applicant pays an application fee of ￥47,620 (+consumption tax). In addition, the parties are each required to pay a hearing fee of ￥47,620(+tax) promptly after the procedures for each hearing have ended.
When the parties reach a settlement, they each pay a fee of ￥142,858(+tax) for the preparation and witnessing of an agreement on settlement.
If it is determined that the parties will greatly benefit from the mediation, the above-mentioned amount may be increased up to ￥285,715(+tax).
In addition, if any special situation arises, such as significantly more time was required for the arguments of one of the parties, a portion of the amount of the above-mentioned fee to be paid by one party may be billed to the other party up to ￥47,620(+tax), after the opinions of the parties have been heard.
Refunding of fees
- If an application for mediation has been rejected or if the respondent has refused to agree to participate in mediation, what happens to the fees already paid?
- If an application for mediation has been rejected or if the respondent has refused to agree to participate in mediation, the Center will deduct a clerical processing fee from the already paid fee of ￥47,620(+tax) and refund an amount of ￥28,572(+tax) to the applicant.
Reduction of fees
- Are there cases in which the fee for mediation is reduced?
- Our mediation services have a system for reducing the amount of the fee when one or both of the parties are individuals, small businesses or organizations with 10 or less employees, institutions contributing significantly to the public good (e.g., universities), etc. and it is determined that these parties have difficulty paying the full amount of the fee, the fee may be reduced upon the request of such parties.
Application for the Advisory Opinion only on infringement
- We have a case in which a third party may have infringed on our patent rights. Can the Center issue an Advisory Opinion on whether or not the third party (respondent) has infringed on our rights without notifying them?
- The Center cannot conduct any mediation procedures with the participation of only one of the parties. This is because the Center is an organization for making a decision after hearing both sides of the parties who are in conflict with each other.
However, if you apply for the Center's unilateral opinion, which will be issued on the basis of the arguments and documentary evidence presented by the applicant, you can request an Advisory Opinion on whether or not the other party's product falls under the technical scope of your patented invention without notifying the other party.
Agents for the mediation application
- We are a manufacturer now planning to apply for mediation regarding a patent infringement. We will appoint an attorney-at-law as the agent for our application. Do we need to have the Center's opinion on the appointment?
- You do not need to have the Center's opinion on the appointment of your agent at all. Your corporate lawyer or patent lawyer can be appointed.
Compensation for agents
- We want to apply for mediation and are wondering how much the agents should be paid.
- The amount of the compensation differs from agent to agent. Please discuss compensation with your agents when you request them to represent you in the application for mediation. It seems that most agents have set their compensation amounts lower than for a lawsuit.
Transition from mediation to arbitration
- Can we change to arbitration after applying for mediation? In that case, are arbitrators different from mediators?
- The Center can conduct continuous procedures from mediation to arbitration. If after the mediation procedures have begun, the parties reach an "arbitral agreement" in the middle of the mediation, they can switch over to arbitration. In this case, two to three mediators will serve as arbitrators. (If there are only two mediators, the Center will appoint an additional arbitrator.) If the parties so wish, new arbitrators may be appointed. If the mediators in charge of the case for mediation conduct the arbitration procedures, the procedures will be performed efficiently because they have already grasped and understood the details of the case.