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Ways to resolve an intellectual property (IP) dispute

What is an IP dispute? 

An IP dispute is a conflict or disagreement over IP rights (see guide on intellectual property considerations). It is usually initiated by the rights holder. Businesses raise IP disputes when they believe that other individuals, companies, or entities have made an unauthorized use of their IP assets, such as copyrighted material, patented inventions, trademark-protected signs, and trade secrets (see guide on intellectual property). 

As with other commercial disputes, it is important to maintain and understand your own IP rights and how they can be enforced, as well as recognize and respect the IP rights of others. More information on settling an IP dispute can be found at the WIPO website.

How can IP disputes arise? 

IP disputes arise when the holder of an IP right alleges that its IP has been acquired or used by another (infringed) without its permission. For example, the use of a trademarked sign or patented invention without the holder’s consent may constitute trademark or patent infringement. A business that acquires another’s trade secret, such as a customer list, by spying or by using another method that runs against honest commercial practices may violate the holder’s right in its undisclosed information. 

Unfortunately, an IP dispute may also be raised in bad faith by a business which alleges the infringement of a right that does not in fact exist, with the objective of gaining a competitive advantage. IP disputes can also arise over the ownership and authorization to use IP developed by joint partnerships or through other cooperative arrangements.

What can I do in the event of an IP infringement? 

It is usually the responsibility of the IP right holder to protect their rights by identifying and challenging infringement. If someone has infringed your IP rights or alleges that you have infringed theirs, you should seek expert advice. As IP rights are enforced at the local level, specialized knowledge of domestic laws and practices is required to successfully protect your IP or defend against an infringement allegation. Depending on the jurisdiction, you can contact the local customs authorities or business support associations to find out which tools and procedures are available. 

The five actions listed below are among those commonly taken in the event of IP infringement: 

  1. Cease-and-desist letters: When the identity of an alleged infringer is known, the IP right holder often attempts to resolve the dispute directly by sending a cease-and-desist letter that notifies the infringer of how its business activities conflict with an IP right(s). If the infringement was unintentional, the infringer will often either discontinue its activities or agree to negotiate a licensing agreement.
  2. Administrative proceedings: Most jurisdictions maintain registers of patents and trademarks, among other IP rights, that are protected in their jurisdiction. Some jurisdictions offer procedures for opposing a registration or invalidating an already registered right. IP right holders may pursue such administrative procedures in order to prevent similar or allegedly infringing signs or inventions from obtaining legal rights.
  3. Alternative dispute resolution (ADR): ADR proceedings are sometimes less costly and complex alternatives to resolving an IP dispute than judicial proceedings. Two types of ADR processes may be available. In a mediation procedure, a mediator helps the parties to reach a mutually satisfactory agreement. In an arbitration procedure, one or more arbitrators make a binding decision for all parties based on the rights and obligations of the latter and arbitral law. Licensing agreements and other contracts often provide for parties to resolve disputes under the agreement through ADR in lieu of judicial proceedings.
  4. Judicial proceedings: Judicial proceedings are usually the last resort for resolving an IP dispute. Different judicial venues and remedies may be available under domestic law. Judicial authorities may issue temporary and/or permanent injunctions enjoining infringing activities; and order the infringer to pay compensation for the IP right holder’s damages and expenses. Domestic law enforcement may also pursue IP infringers with criminal proceedings and penalties in certain circumstances

Where can I learn more? 

The World Intellectual Property Organization (WIPO) has an Arbitration and Mediation Center that provides mediation and arbitration services at reduced fees for small businesses in case the latter opt for ADR mechanisms to resolve IP disputes. The WIPO Arbitration and Mediation Center can assist with procedures and provide templates for contract clauses and submission agreements to present an IP dispute.