The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
How to Resolve Intellectual Property Disputes in a Quick, Cost-Effective and Safe Manner with Mediation
Even in the area of Intellectual Property (IP), disputes can become lengthy, costly and complex. However, there is an effective and increasingly used tool for resolving conflicts: mediation.
What Is Mediation?
Mediation is a voluntary extrajudicial process that allows parties involved in a dispute to reach an agreement with the help of a neutral and qualified mediator. It is an alternative solution to the traditional court process, designed to be faster, cheaper and more confidential.
Why Choose Mediation?
- Time saving: Mediation can be concluded in a few months, i.e., much faster than the long times of ordinary justice.
- Cost reduction: By avoiding high legal fees and court costs, mediation is more economically viable than the traditional court process.
- Total control: It is the parties who build the solution together, with the guidance of an experienced mediator, without leaving the decision to an outside judge.
- Confidentiality: Everything discussed remains confidential, protecting the reputation of the parties involved and company secrets.
- Flexibility and customization: Mediation offers the possibility of finding tailor-made arrangements, including through innovative solutions not provided by law.
- Legal effectiveness: the agreement reached has binding force and can be enforced immediately.
- Important tax advantages:
- the mediation agreement is exempt from payment of registration tax up to a value of 100,000 euros;
- the acts, documents, and orders related to the mediation are exempt from stamp duty and any other taxes or fees;
- tax credit is given on both the compensation paid to the mediation body and the legal fees, if the procedure ends with an agreement.
Mediation Before EUIPO
In 2023 the European Union Intellectual Property Office (EUIPO) established a Mediation Center dedicated to Alternative Dispute Resolution (ADR) on European Union trademarks and designs.
Thanks to a process of gradual strengthening of mediation services offered by the EUIPO, which culminated on 2 June 2025, parties involved in any inter-partes proceedings before the EUIPO, whether first- or second-instance opposition or cancellation proceedings related to European Union trademarks or invalidity proceedings for European Union registered designs (EUDs), can now request mediation to resolve their dispute amicably and effectively.
In addition, mediation services – initially reserved for certain categories (such as SMEs) – are now more accessible and efficient, having been made available to all parties involved and accessible entirely online, through the dedicated ADR platform.
EUIPO has also promoted greater awareness of the importance of mediation as an alternative method of dispute resolution, encouraging parties to consider it as a first option.
During mediation, pending proceedings are suspended, allowing the parties to focus on finding an amicable agreement. The Mediation Center offers qualified mediators and procedures in a variety of languages, ensuring a fast, confidential and specialized path to the protection of IP rights at the European level.
Another aspect that cannot be overlooked is the ability of mediation to include, in addition to trademark and design disputes, parallel conflicts involving the same parties and other intellectual property rights (such as copyright, domain names, and patents), or any other related dispute pending between the parties in any jurisdiction.
This flexibility makes mediation an even more strategic tool for resolving complex, cross-border issues in a single forum, fostering comprehensive, rapid, and tailored solutions that take into account the entire relationship between the parties, reducing the risk of fragmented conflicts and conflicting decisions between different jurisdictions.
Mediation Before WIPO
WIPO (World Intellectual Property Office), through its Arbitration and Mediation Center, has long offered an international service aimed at resolving, through alternative methods, disputes relating to intellectual property, including trademarks and patents.
The procedure before WIPO is flexible and suitable for complex cross-border disputes, which may include technical issues, for example related to technology evaluation, engineering aspects or the definition of specific contractual terms in the context of licensing and technology transfers. WIPO mediators have global expertise to address these issues. In addition, in the event of failure to reach an agreement, arbitration is possible, ensuring a comprehensive and integrated solution of disputes.
Mediation in Italy
Mediation can also be requested before the UIBM (Italian Patent and Trademark Office) to resolve disputes relating to trademarks and patents.
Since the coming into force of the 'Cartabia Reform', the Italian civil mediation system – also applicable to disputes in the commercial and intellectual property fields – provides for the possibility of introducing mediation as a clause in IP-related contracts that makes it mandatory for the parties to attempt a mediation process before taking legal action in court and thus promotes more participatory and rapid justice.
In recent times, Legislative Decree 216/2024 (the so-called 'Cartabia Corrective'), which became effective on 25 January 2025, introduced some important innovations in the matter of mediation, including:
- Maximum duration of the mediation procedure, which has been extended from 3 to 6 months, with the possibility of an additional 3 months extension upon written agreement of the parties; and
- The possibility of participating in mediation meetings via remote audiovisual connection has been introduced, ensuring mutual audibility and visibility of the parties, with precise rules on the signing of documents and the approval of agreements.
The aforementioned decree has made the use of alternative dispute resolution tools, such as mediation and arbitration, more attractive for companies operating in the intellectual property sector. Furthermore, these tools, thanks to their flexibility, adapt to international contexts, proving to be particularly effective for cross-border disputes since they facilitate agreements that overcome the complexities of multiple jurisdictions.
Mediation before UPC
Also at the Unified Patent Court (UPC), the court specializing in disputes concerning European and Unitary patents, currently common to eighteen EU Member States, it will be possible to resort to alternative procedures to resolve disputes, thanks to its Patent Mediation and Arbitration Centre (PMAC).
The PMAC, which operates with two offices in Ljubljana (Slovenia) and Lisbon (Portugal), will provide institutional support and facilities for the resolution of patent disputes falling within the jurisdiction of the UPC and other disputes relating to European patents with unitary effect.
The PMAC is currently moving towards full operation, expected in early 2026, by finalizing the rules, which should include the possibility of fully online proceedings, flexibility to adapt to specific individual cases, and special provisions for disputes involving essential patents (SEPs) and FRAND licenses.
Although the main scope of competence of the PMAC coincides with that of the Unified Patent Court, including 'classic'" European patents, European patents with unitary effect and supplementary protection certificates (SPC), it is not excluded that the PMAC may also handle related issues involving other intellectual property rights or competition rights (such as abuse of dominant position), promoting a global resolution of disputes.
In summary, what is noticeable is a general trend towards supporting and promoting alternative dispute resolution tools, such as mediation and arbitration, with an expansion and modernization of the services offered, both at European level with the EUIPO and the UPC, and at Italian national level, with particular attention to digitalization, duration and flexibility in the ways in which procedures are carried out.
Our consultants will be able to assist clients in obtaining more information on this matter and in starting and managing mediation before the competent authorities, helping them to choose the solution that best suits their needs and to protect their intellectual property rights without having to face long and uncertain disputes.