These are the slides at the IPO Insurance for Business Conference at the Association of British Insurers, Gresham Street on 2 July

1. IP Insurance for Business
Thursday 2nd July 2015

2. Welcome
Rosa Wilkinson
Innovation Director, Intellectual Property Office

3. Affordable IP Litigation
The Hon. Mr Justice Richard Arnold
2 July 2015
IP Insurance Conference

4. Overview
• Case management in the High Court
• IPEC multitrack
• IPEC small claims track
• Arbitration
• Expert determination
• Mediation

5. Case management in the High Court
• Equally applicable in Patents Court and general Chancery Division
• Statements of case on particular issues
• Menu of disclosure options
• Permission for expert evidence – issue and cost
• Exclusion of admissible evidence if disproportionate
• Guillotines, time-tabling and fixed-end trials

6. IPEC multitrack
• Specialist judges
• Claims limited to £500,000 (except by agreement)
• Full statement of case
• No automatic entitlement to disclosure, witness statements, expert
reports, experiments or cross-examination and application of cost-
benefit test
• Applications on paper and 1-2 day hearings
• Scale costs and overall costs cap of £50,000 (£25,000 for inquiries)
• Transfer rules

7. IPEC small claims track
• Specialist judges
• Claims limited to £10,000
• No need for legal representation
• Short informal hearings
• General no costs apart from court fees and other expenses

8. Arbitration
• Single arbitrator or panel, can be specialists
• Procedural flexibility
• Limited court supervision
• Privacy

9. Expert determination
• Single expert
• Speed and simplicity
• Even more limited court supervision
• Privacy

10. Mediation
• WIPO mediation service
• IPO mediation service
• IPEC small claims track – free mediation service
• Adhoc mediation
• Stays to enable ADR
• Sanctions for unreasonable refusal to participate in ADR

11. Building confidence to innovate
Rosa Wilkinson
Innovation Director, Intellectual Property Office

12. Helping you to help
business
Business Support Policy
@The_IPO
Dave Hopkins

13. What is intellectual property?
Intellectual
Property
Patents
Trade
marks
Registered
designs
CopyrightConfidentiality
Trade
Secrets
Plant
Varieties

14. www.gov.uk/ipo - 0300 300 2000

16. •A free, interactive e-learning tool, 4 short Modules
•Helping advisors increase their knowledge in identifying IP assets
•IPO certification on completion
•A basic overview of IP at your fingertips at anytime
•Portable pocket solution to help top up your IP knowledge
•Download from iTunes & Google Play
•Free and confidential online diagnosis tool
•Help your business grow through Licensing, Exploiting & Franchising
•Identifying and adding value to your IP assets
•A series of free business guides to understanding IP
•Explaining the different types of IP rights & how to protect them
•A great starting point for those beginning their IP journey
•Interactive course with in depth training on IP
•Available in person and online
•Study Guides and downloads

20. Free online diagnosis
Recommendations from a series of 9
On line IP Healthchecks:
Copyright
Designs
PatentsTrade marks
Trade marks overseas
Confidential Information
Licensing
Franchising
Enforcement

23. IP Finance Toolkit
•Templates and guidance to help businesses accurately
identify and describe their IP assets to help decision making
for a potential lender
•Guidance on developing an effective IP strategy,
commercialisation of IP and effective due diligence
processes;
•Improved guidance on finance options for IP rich businesses
and a glossary of accepted definitions to be used when
describing and valuing IP.
https://www.gov.uk/government/publications/banking-on-
intellectual-property-ip-finance-toolkit

25. Any enquiries please contact
Dave Hopkins
david.hopkins@ipo.gov.uk
01633 814041
@The_IPO

26. IP triage
– the right help at the right time
Andrea Brewster
CIPA President July 2015
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IN ASSOCIATION WITH

28. The 7 steps for IP triage
1. Diagnosis
2. Fitting the IP into the business strategy
3. Determining urgency
4. Identifying IP risks & opportunities
5. Formulating the treatment plan
6. Establishing best practices
7. Ongoing review

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30. The 7 steps for IP triage
1. Diagnosis
2. Fitting the IP into the business strategy
3. Determining urgency
4. Identifying IP risks & opportunities
5. Formulating the treatment plan
6. Establishing best practices
7. Ongoing review

31. IP triage
– the right help at the right time
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IN ASSOCIATION WITH

32. Thank you
for listening
Andrea Brewster
CIPA President
president@cipa.org.uk @andreabrewster3
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IN ASSOCIATION WITH

33. David Bloom
Director
T: 0203 036 0551
E: dbloom@safeguardip.com
IP Insurance
Protect Your Investment
in IP

34. About Me
IP solicitor with over 15 years experience.
Advising clients on registration, exploitation and
protection of IP.
Set up Safeguard iP in 2014. UK’s only dedicated IP
insurance broker.

35. Areas To Cover
Call +44(0)203 036 0551 or visit
www.safeguardip.com
Why is IP insurance important?
How wide is the cover?
How much does it cost?
What’s in the small print?
What are the benefits?

36. Why Before-The-Event IP Insurance Is
Important?
Call +44(0)203 036 0551 or visit
www.safeguardip.com
Alternative funding for IP litigation is hard to find and
costly.
Estimated one in four UK SMEs with IPRs have had IP disputes.
UK IP claims have doubled in last 5 years.
IP litigation can be very expensive.
80% of business value now held in intangible assets such as IP.

37. How Does It Work?
Client pays an annual premium.
Call +44(0)203 036 0551 or visit
www.safeguardip.com
If a qualifying claim arises the policy will cover the legal and
related cost of the claim subject to the terms of the policy.
Legal costs whether own side, other side or
disbursements are covered up to the sum insured.

38. Who’s who in IP Insurance?
Underwriters
Managing
Agents
Brokers and
Sub-brokers
IPR Owner

39. What ‘Losses’ Do The Policies
Cover?
Call +44(0)203 036 0551 or visit
www.safeguardip.com
Legal cost of enforcement, defence and revocation actions.
Damages awards.
Contractual indemnities.
IP Contractual disputes.
Loss of profits if right is revoked.
Cost of recalling infringing products.
Reputational damage.

40. What is the scope of cover?
Right holder can choose:
Call +44(0)203 036 0551 or visit
www.safeguardip.com
Which rights it wants to insure (registered
or unregistered).
Amount of cover required (£100k, £500k, £1m to
£10m+).
Geographical scope of cover (UK; EU;
Worldwide exc. USA; Worldwide)

41. How Much Does It Cost?
Rough guide is 1%-3% of sum insured.
Key factors include:
The amount of cover required.
The nature of cover i.e. enforcement/defence.
Geographical scope of cover.
The right being insured.
The industry in which the insured operates.
The insured’s projected turnover.

42. How Much Does It Cost?(2)
IPEC enforcement only policy offered by Cobra Special
Risks: £100k cover for litigation in IPEC. Annual
premiums are fixed at £1393 for a patent, £1072 for a
trade mark and £715 for designs or copyright (plus 6%
IPT tax). £1k excess.
Excess and co-insurance apply.

43. What’s In The Small Print?
Call +44(0)203 036 0551 or visit
www.safeguardip.com
Claim must have a reasonable/good prospect of success.
If a client knows or ought to know of a claim prior to the policy
incepting it will not be covered.
Insurers likely to follow legal advice
regarding settlement.
If a claim arises the client has to obtain an opinion on
likelihood of success.

44. What Are The Benefits?
Increases value of rights –Investors, lenders and licensees
know that funds will be available to fight litigation/invalidity
challenges.
Call +44(0)203 036 0551 or visit
www.safeguardip.com
Allows decisive legal action to be taken when necessary.
Allows accurate budgeting and company cash to be used
more productively.
Acts as a deterrent.

45. Some conclusions
IP insurance isn’t for all firms: Need to assess risk profile.
Call +44(0)203 036 0551 or visit
www.safeguardip.com
Litigation should always be a last resort but is sometimes
unavoidable.
If concerned about IP litigation, BTE insurance provides
the best method for transferring the significant cost risk.

46. Contact
Tel: +44(0)203 036 0551
info@safeguardIP.com
www.safeguardip.com
1A Lloyd’s Avenue
London
EC3N 3AA

47. Break

48. INTELLECTUAL PROPERTY INSURANCE FOR BUSINESS
Dids Macdonald, OBE
CEO of Anti Copying in
Design, Vice Chair of the
Alliance for Intellectual
Property
Creative Industries: from ideas to growth with
confidence

49. Anti Copying in Design
Who am I and what is
ACID?
Interior designer
Product designer
Victim of copying
Campaigner!

50. “We are
excellent at
creating good
design in the UK
but not so good
at protecting it.
Usually only
good designs get
copied. We were
actually good at
designing”

51. Anti Copying in Design
1000’s of designers
from diverse sectors.
ACID is committed to
fighting IP theft and
safeguarding
innovation to ensure
that tomorrow’s
growth creators live in
a safer trading
environment with job
certainty

52. Anti Copying in Design
Artists
Bridal
Ceramics
Childrens’ wear
Design Agency
Education
Fabrics & Textiles
Fashion
Fine Art
Fires & Fireplaces
Floor Coverings
Furniture
Garden Products
Giftware
Graphics
Greetings Cards
Interior Accessories
Interior Design
Jewellery
Kitchen & Bathroom
Lighting
Photography
Product Design
The Arts
Toys

53. Anti Copying in Design
We champion original
design, its protection
and enforcement and
work on behalf of our
members as a leading
UK campaign group
for design law reform.

54. Anti Copying in Design
from iconic

55. Anti Copying in Design
...to everyday, design is all around us...
enriching
our lives as
consumers

56. Anti Copying in Design
solving
problems,
adding value

57. Essentials of an
Intellectual Property
Strategy - Rule Number 1
CREATE
ONE!

58. Essentials of an IP Strategy
Education –
become IP
“SAVVY”
Know your design right from your
copyright, understand the “myths” about
IP. It’s NOT rocket science!

59. Background to creation of
IP Insured
David v goliath
There are approx 350,000
designers in the UK, 87% have
less than 10 employees, 60%
have less than 4 employees.
Taking legal action is the
luxury of the few

60. Essentials of an IP Strategy
IP insurance
we insure our cars, home,
life, possessions?

61. So why not ideas, designs and
creative work?
Protecting tradable IP from
infringement is critical to a
designers livelihood?
Essentials of an IP Strategy
IP insurance

62. Essentials of an IP Strategy
IP insurance
So we worked with Sybaris
over a couple of years to
create a bespoke IP
insurance scheme for ACID
members

63. Essentials of an IP Strategy
IP insurED
So we worked with Sybaris
over a couple of years to
create a bespoke IP
insurance scheme for ACID
members
Sybaris was an ancient Greek City and history
indicates that the first formalised system of
registering intellectual property was developed
there. This system was for the local chefs to protect
their unique recipes, and provide them with a
monopoly for a period of time.
WHY ACID IP INSURED?
IP has a value and must be protected
UK law protects the creations of the mind
www.ip-insurance.com

64. Anti Copying in Design
Intellectual capital
is a critical asset,
the DNA running
through most
businesses
whether small or
large.

65. Anti Copying in Design
What are the benefits?
Seeing a visually strong IP logo on websites,
marketing material, coupled with the
powerful ACID brand of deterrence will
become part of a preventative strategy and
dissuade potential infringers.
If infringers are challenged, IP Insured will
give financial as well as moral backing to IP
rights.

66. Anti Copying in Design
What type of insurance policy is this?
A legal expenses policy that, subject to T & C
and exclusions, will meet legal costs in a legal
action

67. Anti Copying in Design
What are the benefits?
Allow enforcement of a registered trade
mark or registered design or
copyright/unregistered design in the IP
Enterprise Court of England and Wales

68. Anti Copying in Design
What are the benefits?
Unregistered rights must be lodged with the
ACID Databank
Policy subject to a limit of indemnity of
£100K
24 hour telephone advice service

69. Anti Copying in Design
What are the benefits?
Business partners – comfort in knowledge of
ability to enforce rights
Additional intangible asset
Leverage for attracting investment
•That holding the insurance itself can be in an additional intangible asset, arguably. The insurance can be considered to add value to the entity because suddenly the entity has t
•If a Member were to ever seek outside investment, or a loan, it can now say that the IP portfolio (its main assets) are protected and can be enforced – we have found a numbe

70. Anti Copying in Design
What is the process?
First steps - providing an initial assessment of
a case
Any costs providing an initial assessment and
report on merits of claim at ACID member’s
expense
Duration? 12 months from date of
commencement

71. Anti Copying in Design
What is current status of IPEC?
The IP Enterprise Court has a costs-capping
regime, and the £100,000 limit of indemnity
will provide sufficient protection for
Members to bring an IP enforcement action
against an infringer, and to pay for your own
costs and those of an opponent should they
lose and be liable for those costs as well. The
standard excess is only £1,000 and there is
no co-insurance applicable.

72. Anti Copying in Design
What is the cost?
The standard premium is under £1,000
including Insurance Premium Tax, and that is
for all design rights in a Member’s portfolio
that are UK registered, and rights that are
unregistered designs and copyright which
are lodged in the ACID Design Databank.

73. Essentials of an IP Strategy
MEDIATION
“It’s good to talk”
Mediation v litigation
97% success

74. Anti Copying in Design
Intellectual property =
respect
ethics
compliance

75. Essentials of an IP Strategy
KNOW THE RISK
FACTORS
Who is copying
Keep watch!
IP Insured – deterrence,
prevention and confidence

76. INTELLECTUAL PROPERTY INSURANCE FOR BUSINESS
Dids Macdonald
@didsmacdonald
@ACID_tweets
www.acid.uk.com
0845 644 3617
Creative Industries: from ideas to growth with
confidence

77. Writing to express and
not to impress: using
language to gain a
competitive advantage
JEFFREY A.G. HEASMAN, CELTA, LL.B (HONS), LL.M
FOUNDER & SECRETARY
INTERNATIONAL ASSOCIATION OF ENGLISH IN LAW &
INSURANCE ( IAELI)

78. Why is plain English
generally important?
You will appear less pompous, unclear and dull.
Business retention and competitive advantage through
clear and concise presentation and documentation.
Time management with less time spent fielding queries
from puzzled readers.
Compliance/due diligence.

79. Why is it important in an
insurance context?
FCA Thematic Reviews
The UK Insurance Growth Action Plan, December 2013
Sergeant Review of Simple Financial Products, March 2013
Consumer Insurance (Disclosure and Representations) Act 2012
Insurance Act 2015

80. Avoid surplus words
Working words – carry the meaning of a sentence.
Glue words – hold the sentence together so it makes
grammatical sense.
“A well constructed sentence is like a fine cabinetwork. The pieces
are cut and shaped to fit together with scarcely any glue.”
Richard C. Wydick

81. Example
Pursuant to section 152 of the Road Traffic Act 1988 a
claimant must give notice of the commencement of
court proceedings either seven days prior to or seven
days subsequent to the court proceedings being issued
because of the fact that if they do not do so the insurer
may have a defence.
53 words!
Too many glue words!

82. An alternative in plain
English
Under section 152 of the Road Traffic Act 1988 a claimant must give
notice of commencement of court proceedings seven days before or
after proceedings have been issued. Otherwise, the insurer may have a
defence.
Two sentences - one of 28 words and one of 7 words.
“Pursuant to” becomes “under”.
“Prior to” becomes “before”.
“Subsequent to” becomes “after”.
“Because of the fact that” can become “because” or start a new
sentence.
Remember to think about the target reader!

83. Sentence length
Long and complicated sentences will strain the reader’s
patience and their memory!
The average sentence should be no more than 25 words.
The average sentence should carry no more than one
thought.
Note – average not every.

84. Avoid …
Archaic words
Foreign (Latin) words
Jargon and acronyms
Elegant variations
Cliché
Couplets
Ambiguity
Use personal pronouns

85. Nominalizations
(‘hidden’ verbs)
Turning a base verb into a noun.
Complain becomes complaint.
Pay becomes payment.

86. Examples
I want to make a complaint. (6)
I want to complain. (4)
You need to make a payment for the premium. (9)
You need to pay the premium. (6)

87. Ambiguity
“Juvenile Court to Try Shooting Defendant”
“Hospitals are Sued by 7 Foot Doctors”
“Astronaut Takes Blame for Gas in Spacecraft”
www.plainlanguage.gov/examples/humor/headlines.cfm

88. Wordiness
“The climatic conditions prevailing in the British Isles
show a pattern of alternating and unpredictable
periods of dry and wet weather, accompanied by a
similarly irregular cycle of temperature changes.”
British weather is changeable.
“People whose professional activity lies in the field of
politics are not, on the whole, conspicuous for their
respect for factual accuracy.”
Politicians often lie.

89. Wordiness
The due observance and fulfilment of the terms so
far as they relate to anything to be done or
complied with by the Insured and the truth of the
statements and answers in the Proposal shall be
conditions precedent to any liability of the Company
to make any payment under this policy.
Taken from ‘Language on Trial’ by the Plain English Campaign

90. An alternative in plain
English
We will only make a payment under this Policy if:
1. you have kept to the terms of the Policy; and
2. the statements and answers in your Proposal
are true.
Taken from ‘Language on Trial’ by the Plain English Campaign

91. In summary
Avoid surplus words.
Avoid elegant variations and prefer
pronouns.
Think about sentence length and
content.
Avoid jargon, clichés, foreign and
archaic words.
Think about style and the target reader
– FCA!
Avoid nominalizations.
Avoid ambiguity – the 2012 and 2015
Acts!
Do not be wordy.
Regularly review standard letters and
templates.
Write to express and not to impress!

92. Facilitated Networking

93. Panel Session
Andrea Brewster
David Bloom
Dids Macdonald

94. Lunch

95. Welcome Back

96. IP, Innovation and Growth
Chief Economist
Pippa Hall

97. UK - intangible investment growth
£ billion
nominal
Source: EU COINVEST and Haskel et al

98. Cross-country ranking on intangibles
Source: OECD
Intangible to tangible investment ratio
1.64 1.60
1.23 1.20
0.89 0.89 0.86 0.84
0.73 0.71
0.65
0.46 0.44
0.40
0.30
0.23
0.0
0.5
1.0
1.5
2.0
UnitedKingdom
UnitedStates
Sweden
Finland
Denmark
France
Germany
Canada*
Japan*
Portugal*
Austria
Spain
Australia
CzechRepublic
Italy
SlovakRepublic

99. The largest proportion of investment in
IPRs is in copyright...
Investment in
2011
Investment in
Patents
£6.3bn
Investment in
Copyright
£30.1bn
Investment in
Registered
Design
£1.9bn
Investment in
Unregistered
Design
£11.2bn
Investment in
Trademarks
£14bn
Total Investment
in IPRs
£63.5bn
Share of Investment
Patents (9.9%)
Copyright (47.4%)
Registered Design
(3%)
Unregistered Design
(17.6%)
Trademarks (22.1%)
Source EU COINVEST and Haskel et al

100. Research commissioned by the IPO shows that firms which own
patents and trademarks grow faster, innovate more and create
better jobs than others.
Those which own patents also lead ‘new to market’ innovation
and those which offer their ideas to others under licence help to
spread the benefits of new ideas through the market and
generate new funding for future research and development.
Business use of IPRs is associated with the creation, transfer and
use of knowledge, higher firm productivity, and it raises the
chances for small firms to survive and grow.
What’s the impact?

101. Importance of IP in the economy
IPR intensive industries generated an estimated 27% of UK employment
and 37% of UK GDP in 2010.
Contribution to UK
employment
Contribution to UK
GDP
Copyright Intensive
Industries
4% 5%
Design Intensive
Industries
11% 11%
Trademark Intensive
Industries
22.2% 33.6%
Patent Intensive
Industries
10.1% 13.6%
Source OHIM/EPO

102. What we are up to?
• Over the next year we will be working towards providing a
high level overview of the characteristics of firms that apply
for IPRs. This will give insurers insight to better understand the
IPR activity of sectors in which companies operate and to
better assess risk.
• Research looking at the failure rates of companies that use IP
compared to those that don’t.
• Research to better demonstrate the link between IP,
Innovation and Growth.

103. Assessing IP value and risk –
improving data provision
Nigel Swycher
CEO, Aistemos

105. • “It rarely works”
• “It is expensive. It only adds to the cost of litigating”
• “It takes ages to set up”
• “There are some cowboy mediators about”
• “Offering to mediate makes you look weak”
• “Fine for touchy-feely stuff maybe but not for a real dispute”
• “It is only suitable for big ticket cases”
• “Mediation settlements aren’t binding”
• “Having a mediation clause in a contract is pointless”

107. Ranked as a leading mediator in Chambers and the
Legal 500, Andrew has successfully mediated a wide
variety of commercial and insurance related disputes.
He has spent his career working in industry, closing
multi-party deals and resolving disputes, for
companies big and small. As a top ranked senior in-
house counsel, he has headed up legal and business
divisions including at Channel 4 and FilmFour.
Andrew is a solicitor. He started his career at law firm
Mishcon de Reya, becoming a partner aged 28. He is
now is now a partner at Gunner Cooke.
Andrew mediates independently and through leading
UK mediation providers ‘In Place of Strife’ and QL
Mediation.

108. 1: The Success Rates
2: The Legal Reasons
3: The Business Case
4: Choosing the right mediator
5: Putting mediation clauses into contracts

109. • Mediation works
• 70% of UK commercial mediations settle in a day
• And another 20% shortly after, because it acts as a catalyst
• 75% of UK commercial mediations settle in a day
• Another 11% settle shortly after. It acts as a catalyst
• It is also quick, confidential and risk-free

110. • How to help your client assess whether litigation, arbitration or mediation is likely to be their best option: The ten
things that need to be considered
• Litigation: A few brief words
• Typical copyright/patent disputes where mediation works well
• Inserting mediation clauses into contracts
• Early Dispute Resolution
• Choosing the right mediator
• Mediation is invariably more effective, quicker and cheaper
• Takeaway points
• Main advantages of mediation compared to litigation and arbitration
• Disputes stay private. What’s discussed can’t be repeated publicly &
there’s no danger of a judgment being awarded against you
• Definition: A confidential process with an independent, neutral third
party (a mediator) who is appointed to help the parties reach a
negotiated settlement

111. • Mediation costs ¼ as much as litigating
• It costs more to file a claim at court than it does to hire a mediator to settle
it
• Mediation fees: Usually insignificant compared to the alternatives. Or the
sums in dispute. And the cost is shared by the parties
• Outside IPEC, litigating doesn’t make commercial sense for sub £125k
claims

112. Standard step in the courts. UK Government promoting it strongly
Lawyers required to inform clients about ADR at an early stage
Judges encourage it. They increasingly stop proceedings & direct parties to mediate
and impose serious cost sanctions against parties who unreasonably refuse to
mediate. In ‘Laporte’, defendant won comprehensively but was unable to recover
any of their legal costs
When is a refusal unreasonable? If a mediator could bring the parties
together without the mediation either being disproportionately expensive or
likely to cause a delay (Northrop)
•PGF II SA v OMFS Company 1 Ltd [2013] [2013] EWCA Civ 1288, per L.J Briggs
•Halsey v Milton Keynes NHS Trust [2004] EWCA Civ 576, Ward, Dyson and Laws L.JJ
•Laporte v Commissioner of Met Police [2015] EWHC 371 (QB)
•Northrop Grumman Mission Systems v BAE Systems

113. Speed
•Much quicker than going to court
•Timing can be crucial, e.g. deadlines/cash-flow issues/year-ends
•Your time is better spent running your business
Mediation de-risks
•It is not like going to Court
•You can settle on whatever terms you want
•You don’t need to wait until the damage has been done
•Deals can be restructured, e.g. to suit tax or cashflow purposes
•Settlements can be ‘non-precedential’ - handy for royalty disputes & class
actions
•Avoids glaring own goals & collateral damage
Disputes can be defused before they escalate & relationships can be salvaged
A one-off opportunity to get what you want to achieve & put the dispute to bed

114. • Risk Reduction & Cost Reduction
• Over 75% of business ‘users’ said that mediation should be used:
a) as early as possible in a dispute’s life cycle
b) as part of the deal-making process, whether or not a dispute had arisen
• 66% of ‘users’ favour both mandatory mediation and contractual clauses
requiring parties to mediate before litigating/arbitrating

115. ‘We do not see things as they are. We see things as we are.’ Anais Nin
‘Insanity: Doing the same thing over and over again & expecting different results’.
Einstein
‘If you want to erode someone’s intransigence, trying to understand who you are
arguing with is likely to be more productive than concentrating on the subject of
the argument’. Daniel Kahneman

116. T
• Marriage Guidance but for businesses
• Why wait until you are bogged down in litigation. You wouldn’t if it was your
marriage
• It saves relationships. Inside a client’s business too
• Changing the story:
• From ‘How it got to this’… to ‘Where do you want to go from here?
• Talking to terrorists

117. Litigation, arbitration or mediation: The 9 things you need to consider
• Effectiveness
• Risk
• Speed
• Cost
• Relationship
• Stress
• Confidentiality/Publicity
• Suing/Enforcing abroad
• Danger of adverse judgment

118. ‘At least I can get on with my life again’
Litigation fatigue
What litigation feels like as a client
Frictions in the boardroom

119. You want to settle or that could be expensive, embarrassing, or time-
consuming, or:
•you could benefit from another shot at resolving problems without declaring
war, or where court might not be the most productive way forward
•where there’s a vacuum between what the commercial teams can manage and
what litigation can deliver
•where the dynamics seem to be getting in the way of a working relationship, or
where publicity could be damaging
•to resolve a dispute inside your business, e.g. with partners, shareholders,
directors or employees. Family businesses, especially
•to fix problems early so that they don’t escalate

120. It isn’t just about mediating. I can also help as a:
•Facilitator: by keeping awkward conversations productive
•Dispute Settlement Specialist
•Mediation Advocate, in the run up to a mediation
-a commercial sounding board
-a fresh review
-coaching the team to make the most of a mediation
-representing the team on the day: Gamekeeper/Poacher
•Project Mediator
•Mediation ‘triage’ & 1-1 Conflict Coaching

121. Choosing the right mediator
•What experience do you need? Litigation or Deal-making?
•Could specialist IP expertise be helpful
•Call the mediator: Get a feel for yourself
Contractual mediation clauses: Key considerations when drafting the
contract:
•Is clause more likely to work in your favour & keep costs down?
•Your mediator: Who do you want & what experience should he/she have? e.g. ‘lawyer
qualified by experience to deal in IP matters’
•Is jurisdiction relevant? If so, how happy would you be having to litigate abroad?
•Enforceability
Clauses mainstream in many industries, often as part of escalation system with
arbitration as a fallback. Or on joint ventures/long-term projects, parties jointly appoint
someone at the outset to handle whatever cross-party disputes crop up along the way

122. Use it to:
• Show your client how good you are
• Avoid being conflicted out
• Retain control over a case that would otherwise be dealt with abroad
A relationship client will appreciate it if you can:
• deliver a quick, commercial result
• help them avoid litigation. (Here but also overseas)
• show you are thinking about their bottom line
To do that, you need to know what your client really wants.
Not what they say they want

123. © Hildebrand Mediation Limited, 2014
Consider what you want to achieve, the likely outcomes & the risks
Don’t press the litigation trigger until you do
•Consider mediation wherever normal channels of communication don’t
seem to be working
•Mediation is highly effective, inexpensive and speedy.
Risk-free too
Andrew@hildebrandmediation.com
+ 44 (0) 20 7286 0272

124. Janis Makarewich-Hall
Head of the UPC Taskforce
Unified Patent Court: Measures to help
businesses make use of the UPC

125. Structure of the UPC
Court of First Instance
1) Central divisions seat in Paris with section in London (pharma
& bioscience) and Munich (Mechanical engineering)
2) Local / regional divisions
Court of Appeal – Luxembourg
Mediation Centre – Ljublijana
Arbitration Centre – Lisbon
Training Centre – Budapest

126. Style of Procedure
• Bifurcated system: Revocation in Central Division,
Infringement in local / regional division (unless no local
divisions)
• Will be shorter, faster and not paper based (digital)
• Main legal arguments made in writing, reviewed by Judge
Rapporteur and panel during the interim procedure
(**mediation possible through the entire process)
• Short trial (1-2 days)
• Aim finish within 1 year

127. Mediation & Arbitration in the UPC
• Rules are being developed ahead of agreement at
Preparatory Committee
• Guidelines on how the process will work will need to be
devised. Expect centres to be administrative only.
• List of qualified mediators and arbitrators to be agreed
and published
• Important to note: Is not mandatory in the UPC

128. Court Fees
• 7 fixed fees have an additional value based fee
• 18 fixed fee only actions
• Fixed fees start at 80 € for the opt-out and go up to
20,000 € for the revocation
• Value based fees will cost up to 220,000 € for the most
valuable cases (more than 30m €)

129. Recoverable costs
• Loser pays system
• Court fees, legal representation costs and court costs can
be recovered
• There is a ceiling to the amount that can be recovered
• Actions valued up to 250,000 € have costs capped at 50,000 €
• Actions valued at more than 50m € have a ceiling of 3m €.

130. SME support
• Alternative 1 – Rewarding behaviours of all:
• Single judge discount of 25%
• Fee reimbursements for early settlement, withdrawal
• Alternative 2 – SME discounts
• No value based fees
• Applies to small and medium sized enterprises, micro-entities,
non-profit organisations, universities and public research
organisations

131. UPC Insurance
• UK, Denmark and France working together to encourage
patent insurance companies to develop schemes for the
UPC (including court fees) that are attractive to small
companies.
• Currently reviewing any similar insurance schemes in
other member states
• Dedicated working group to be set up in Autumn

132. Court fee consultation
• Schedule of fixed and value based fees, options for SME
support and a scale for recoverable costs
• Closes on 31st July
• Accessed here: http://www.unified-patent-
court.org/consultations
• Responses in writing to secretariat@unified-patent-
court.org

133. Closing Remarks
Rosa Wilkinson
Innovation Director, Intellectual Property Office