Dispute considerations

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In-house counsel deal with a broad range of legal issues that must be addressed within limited budget, time and resource constraints. An experienced IP lawyer can help you maximise legal effect for minimal or ‘appropriate’ spend. The key to achieving this is to properly characterise a dispute to predict its likely course if different strategies are adopted.

Knowing how and when to escalate is essential to getting the result you need as efficiently as possible – from business-to-business ‘soft’ communications to formal cease and desist letters, sharp threats of litigation, or formally instituting legal proceedings – and when and how to use alternative dispute resolution procedures such as mediation.

Business-to-business communications

In some instances, maximising the likelihood of an early resolution, and avoiding expense, will be achieved by way of business-to-business “friendly” communications . This can allow resolution of the issues before escalating or investing significantly in a lengthy legal battle.

Litigation

At other times the most time and cost-efficient approach may be quick escalation towards court proceedings so that the opposing party treats the matter with appropriate seriousness. It is not uncommon for cease and desist letters to go back and forth without progress until one party is served with proceedings and the prospect of spending significant money dealing with it becomes real – as does the impetus to then find a way to resolve the dispute.

Arbitration is essentially ‘private litigation’. It is a similar process to litigation before a Court however it takes place in private setting and thus provides confidentiality. Instead of a judge the case is heard by an arbitrator who gives a decision known as an ‘award’ rather than a judgment. Awards can be enforced in most developed countries through local courts if needed.

Arbitration can be faster than litigation because you don’t need gaps in a court timetable or abide by a court set pace – you get to set the pace of the proceedings. The applicable rules and procedures can be agreed between the parties as they decide to enter arbitration or they may be determined by prior agreement e.g. many contracts may specify that in the event of a dispute, the parties agree to arbitration in a particular place, using a particular set of rules.

This can be attractive where the parties are in different countries / jurisdictions and do not want to feel disadvantaged by accepting the other side’s jurisdiction and law. For example many arbitrations use internationally recognised rules (such as the UNICTRAL rules), and take place in a ‘neutral’ jurisdiction (e.g. Singapore, Sydney, Hong Kong, or wherever is convenient) and using an agreed body of law.

Mediation

Mediation is a very useful tool to explore possible resolution of disputes. This can occur before any formal steps (such as filing court proceedings) have taken place, or after proceedings are underway. When it will be most effective will depend on the circumstances, however it should always be on your radar. At best it can provide a forum to resolve the dispute (often in completely unexpected ways) and at worst it gives an insight into the other side’s thinking, approach and key personalities. Choosing the right mediator is vital.

Responding to threats

If you are on the receiving end of a cease and desist letter or like allegation, you are bound to have many questions. How and when do you respond? What tone do you strike? Is the other side just ‘trying it on’ or is there substance to the allegations?

Knowing how to respond is a matter of judgement, experience, and understanding of the commercial context and the personalities involved. Discuss the options with your legal advisers early, so you are well equipped to deal with the situation.

Depending on your business you may simply know that disputes with your key competitors will arise from time to time. Be prepared and have a strategy in place to minimise the risk or likelihood of disruption.