Resolving disputes
There are a number of actions you can take to resolve a dispute over infringement of your IP rights.
We recommend you seek the advice of an IP professional when planning to enforce your rights.
You can:
- issue a letter of demand or warning from your attorney
- propose negotiations to settle out of court (often referred to as Alternative Dispute Resolution)
- request Customs to seize infringing imported goods or products for 10 days while you seek a court order
- initiate court action
Letter of demand
In most cases an owner of IP rights will issue a letter of demand to a person or business suspected of infringing the IP rights.
A letter of demand is not strictly a legal requirement unless it has been specified in a contract.
An effective letter of demand will:
- identify your entitlement to make the demands, as the owner or exclusive licensee of the rights
- set out all of the infringing conduct, with written examples if available
- specify the legal reason why there has been an infringement; for example, the specific sections of the Copyright Act 1968 that have been infringed
- set out a specified period of time in which the infringer must give an undertaking that they will stop infringing, return to you all infringing property, and provide information that will enable you to calculate a claim for compensation
- state that if the demands are not met you will initiate legal proceedings without further notice
Often, an infringer will stop infringing once they receive a letter of demand, without legal proceedings being issued.
Alternative Dispute Resolution (ADR)
There are a number of options you can take to resolve a dispute over IP infringement. Using Alternative Dispute Resolution (ADR) may help resolve your dispute more quickly, cheaply and with a more satisfactory outcome than going to a court or tribunal.
ADR usually takes place before a matter goes to court. It may also be a Court decision that parties undertake ADR before returning to Court, if mediation fails.
Court action can be expensive, so settling under ADR is likely to be in the best interest of the parties.
Dispute Resolvers
The first step is to understand the benefits for both parties. To fully understand the benefits and the way ADR might apply, you can talk to an ADR professional.. These professionals are often called dispute resolvers. Resolvers can:
- mediate
- conciliate
- arbitrate
Contacting a Resolver
Resolvers can be contacted by either party involved in the dispute to begin ADR.
There are many national and state-based resolvers, and some of these are experienced in IP. To find one you can visit the Attorney-General's Department's Access to Justice website that provides a list of free or low cost mediation services provided by state and territory governments.
You can also contact LEADR, the Association of Dispute Resolvers, in Australia .
State law societies and bar associations may also help you to locate either an ADR practitioner or publicly available lists of ADR practitioners.
In addition, the National Alternative Dispute Resolution Advisory Council can provide you with more information on ADR.
Court Action
If the other party ignores the letter of demand, your next step may be to start proceedings in a court of law.
Infringement proceedings are very expensive, and they allow the other party to challenge the validity of IP rights. Alternatives to an infringement action are mediation or arbitration or an independent assessment.
If you proceed with court action, and are successful, the court may award damages or other remedies.
Last Updated: 13/12/2012
